THE JOHN MARSHALL
REVIEW OF INTELLECTUAL PROPERTY LAW
PREFERRED EMBODIMENTS IN PATENTS
TOM BRODY
ABSTRACT
It is a tradition in patent drafting to refer to one or more examples as "preferred" or as a "preferred
embodiment." While these "preferred embodiments" reside in the specification, they can influence
the interpretation of the claims. The role of preferred embodiments in claim construction was the
issue in two cases, Laitram Corp. v. Cambridge Wire Cloth Co. and Vitronics Corp. v. Conceptronic,
Inc. These cases represent two different lineages of the case law that refer to preferred
embodiments, where application of these cases broadens (or prevents narrowing of) claim scope.
Laitram warns against confining the claim to a specific example disclosed in the specification, where
the example is a preferred embodiment. Vitronics warns that the claims should not be interpreted
in a way that excludes the preferred embodiment. Where an example is labeled as "preferred," this
labeling almost always works to the advantage of the patentee during litigation. But, this labeling
can also backfire against the patentee, resulting in claim invalidation. Two arguments can turn the
preferred embodiment against the patentee. The first causes the claim to fall under the scope of the
prior art, resulting in invalidation under 35 U.S.C. § 102. The second invokes the best mode
requirement, thereby demanding a high degree of enablement under 35 U.S.C. § 112. Where a high
degree of enablement is required, it can raise the question of validity for lack of enablement.
Copyright © 2009 The John Marshall Law School
Cite as Tom Brody, PreferredEmbodiments in Patents,9 J. MARSHALL
REV. INTELL. PROP. L. 398 (2009).
PREFERRED EMBODIMENTS IN PATENTS
TOM BRODY*
INTRODUCTION
Patents contain two sections, the specification and the claims. 1 The claims
identify the legal boundaries of the intellectual property, while the specification
contains background information useful for interpreting the claims and for providing
guidance for making and using the claimed invention.2 Mainstream concerns for
patent drafters include determining the persons to be named as inventors, 3
determining the date of conception and the patent's priority date, 4 drafting working
and prophetic examples for the specification, 5 duty to disclose,6 foreign filing
strategies, 7 and claim drafting.8 This article concerns claim construction and focuses
exclusively on the role of preferred embodiments in claim construction.
Claim
construction, a task that occurs during litigation, must occur before the court
* The author received a Ph.D. in biochemistry from the University of California at Berkeley in
1980, and is a patent agent in the
[email protected].
1 35 U.S.C. § 112 (2006).
San Francisco
Bay area.
He can be reached
at,
3 See generally Dale L. Carlson & James R. Barney, The Division of Rights Among Joint
Inventors: Public Policy Concerns after Ethicon v. U.S. Surgical, 39 IDEA 251 (1999) (discussing
joint inventorship issues after Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir. 1998));
David Hrucik et al., Save a Little Room ForMe: The Necessity ofNaming as Inventors Practitioners
Who Conceive of Claimed Subject Matter, 55 MERCER L. REV. 635 (2004) (discussing whether The
Patent Act precludes a prosecuting patent attorney from being a named inventor on the patent he or
she is prosecuting).
4 See Paula K. Davis & Steven P. Caltrider, Timing (ofInvention) is Everything The Essential
Role of the Written Description Requirement in Determining Conception, 15 FED. CIR. BAR J. 39,
51-52 (2005) (discussing several issues related to the "timing of invention"); Charles L. Gholz, A
Critique of the New Rules and the New Standing Orderin Contested Case/InterferencePractice,87
J. PAT. & TRADEMARK OFF. Soc'Y. 62, 68-70 (2005) (discussing new regulation relating to priority
challenges in interference actions). See generallyMark A. Lemley & Colleen V. Chien, Are the U.S.
Patent PriorityRules Really Necessary, 54 HASTINGS L.J. 1299 (2003) (discussing the merits and
trends of "first to invent" systems with "first to file systems").
5 See Brian P. O'Shaughnessy, The False Inventive Genus: Developing a New Approach for
Analyzing the Sufficiency of PatentDisclosure Within the UnpredictableArts, 7 FORDHAM INTELL.
PROP. MEDIA & ENT. L.J. 147, 167-71 (1996) (discussing how courts have evaluated the adequacy of
patent specifications in the "unpredictable arts"). See generallyThomas P. Nound, Mark S. Carlson,
& Paul T. Meiklejohn, PatentLaw Issues Affected by the Predictabilityof Technology in the Field of
Invention, 88 J. PAT. & TRADEMARK OFF. SOC'Y. 603 (2006) (discussing specification requirements
for "non-predictable technology").
6 See generally Tom Brody, Duty to Disclose: Dayco Products v. Total Containment, 7 J.
MARSHALL REV. INTELL. PROP. L. 325 (2008) (discussing the duty to disclose patent subject matter).
7 See generally Douglas N. Modlin & Michael A. Glenn, InternationalPatent Strategies for
IndividualInventors, 6 J. HIGH TECH. L. 129 (2006) (describing patent filing strategies of individual
inventors).
8 See generallyTom Brody, FunctionalElements Can EnsureAllowance of Genus Claims, 90 J.
PAT. & TRADEMARK OFF. SOC'Y. 621 (2008) (addressing the use of "functional language" in claim
drafting).
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Preferred Embodiments in Patents
evaluates the claim-invalidating effects of prior art publications, and before the court
determines if an accused infringer had actually infringed the claims. 9 The Federal
Circuit's flow chart (or decision tree) used for claim construction is detailed in the
author's article in Virginia JournalofLaw and Technology.10
I. THE EARLIEST PREFERRED EMBODIMENT
Labeling one or more examples in the specification as "preferred" is an old
tradition in the patent drafting art." In the earliest years of U.S. patents, the term
"preferred" or "preferable" occurs in the patent specification at intervals of every
20-40 patents (Appendix One).12 A number of nineteenth century cases from the U.S.
Supreme Court, dealing with patents, have equated the terms "preferred,"
"preference," or "preferable" as meaning non-essential or merely a recommendation. 13
For example, Russell v. Dodge found that preferable has the meaning of, "mere
adjuncts which may be used or abandoned at pleasure." 14 Several opinions from
nineteenth century patent cases from the U.S. District Courts have also
15
characterized these terms in this same way.
In recent times, the term "preferred embodiment" has occurred in 55-73% of all
patents. 16 This article discloses that labeling an example as "preferred" or as a
"preferred embodiment" enables the patentee to make use of two bodies of case law,
17
as represented by Laitram Corp. v. Cambridge Wire Cloth Co.,
and Vitronics v.
18
Conceptronic, Inc.
These two cases provide the patentee with two distinct
arguments for maintaining or broadening claim scope. 19 In other words, the simple
9 Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (1995).
10
Tom Brody, Claim Construction Using Contexts of Implications, 13 VA. J.L. & TECH. 3, 2325 tbl.2 (2008) [hereinafter Brody, Contexts ofImplications].
11See, e.g., Machine for Manufacturing Silver Spoons, U.S. Patent No. 26 (issued Sept. 20,
1836) ("[Tlhe short roller with but one cutter upon it will be preferable.") (emphasis added).
12 See infra app. One.
13 Eg., Russell v. Dodge, 93 U.S. 460, 462 (1876); Sewall v. Jones, 91 U.S. 171, 181-85 (1875);
Klein v. Russell, 86 U.S. 433, 447-49, 467 (1873); Winans v. N.Y. & Erie R.R. Co., 62 U.S. 88, 99
(1858).
14 93 U.S. at 462.
15 E.g., Marsh v. Dodge & Stevenson Mfg. Co., 16 F. Cas. 805, 808 (N.D.N.Y. 1873); West v.
Silver Wire & Skirt Mfg. Co., 29 F. Cas. 727, 728 (S.D.N.Y. 1867); Whipple v. Middlesex Co., 29 F.
Cas. 940, 942 (D. Mass. 1859); Buchanan v. Howland 4 F. Cas. 529, 534-35 (N.D.N.Y. 1863). Contra
Hawes v. Gage, 11 F. Cas. 867, 868 (N.D.N.Y. 1871) (holding that the claim language limited the
invention to the preferred embodiment).
16 The percentage of issued patents containing the term preferred embodiment(s) from the
years 1980 to 2005 are as follows. The dates are the priority date (not the date of allowance or
issue). 55% (1980), 57% (1981), 58% (1982), 60% (1983), 61% (1984), 62% (1985), 63% (1986), 63%
(1987), 65% (1988), 67% (1989), 70% (1990), 69% (1991), 70% (1992), 71% (1993), 70% (1994), 72%
(1995), 72% (1996), 73% (1997), 72% (1998), 72% (1999), 68% (2000), 66% (2001), 65% (2002), 62%
(2003), 59% (2004), and 58% (2005). These numbers were determined using the STN program
available from the American Chemical Society and the USPatfull database.
17 863 F.2d 855 (Fed. Cir. 1988).
18 90 F.3d 1576 (Fed. Cir. 1996).
19See Laitram, 863 F.2d at 865 (expanding the scope of the claim beyond the preferred
embodiment); Vitronics, 90 F.3d at 1583 (asserting that the preferred embodiment must be
consistent with the claims).
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expedient of including the word "preferred" in a patent, together with application of
one of these often-cited cases, can persuade a court to broaden claim scope, to the
20
advantage of the patentee.
Where the word "preferred" is included in a patent, the word is typically placed
within commentary about one or more examples. 21 Alternatively, or in addition,
inventors may include the term "preferred" in the title of a section within the patent,
where the title reads, e.g., "DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENT" or "DETAILED DESCRIPTION OF THE PREFERRED
EMBODIMENTS." 22 To provide an example, Reissue Patent RE 30,341 was the
subject of Laitram Corp. v. Cambridge Wire Cloth Co.2 3 The terms "preferred" and
"preferably" occurred 13 times in the specification of RE 30,341.24 The context of one
of these instances is as follows:
Although other noncircular cross sections such as hexagonal may be
employed, the square cross section is preferred because it provides
maximum strength coupled with maximized driving force-imparting
surfaces and corners, is symmetrical with respect to the rotational axis and
lends itself to fabrication simply and easily of a variety or combination of
25
materials.
II. THE NATURE OF THE PROBLEM
In construing patent claims, the lower courts sometimes make the mistake of
unjustly limiting a claim to require certain features of one of the written examples of
the invention, as found in the specification.26 The result is undue narrowing of claim
scope. 27 This practice of limiting claims generally works to the advantage of the
accused infringer, and to the disadvantage of the patentee. 28 The term "mistake," as
used here, rests on the fact that the Federal Circuit had reversed the narrow claim
construction of the lower court in the cited cases.29 The term "mistake" also rests on
the Federal Circuit's characterization of the mistake as a common one. 30 The Federal
Circuit has characterized the practice as "a classic attempt to limit the scope of a
20 See Laitram, 863 F.2d at 865 (expanding the scope of the claim beyond the preferred
embodiment); Vitronics, 90 F.3d at 1583 (asserting that preferred embodiment must be consistent
with the claims).
21 E.g., Conveyor Drive, U.S. Patent No. Re 30,341 col. 2 11. 28-45 (filed June 22, 1978)
(reissued July 22, 1980).
22 Eg., Personal Mobility Vehicle, U.S. Patent No. 4,570,739 col. 3 11. 22-24 (filed Sep. 29,
1983) (issued Feb. 18, 1986).
23 863 F.2d 855, 856 (Fed. Cir. 1988).
24 '341 Patent col. 1 1. 67, col. 2 11. 2, 37, 42-43, col. 4 11. 25, 33, 37, 47, 51, col. 5 11. 12, 34-35,
51, 61.
25 Id. col. 411. 35-42 (emphasis added).
26 See, e.g., Apex Inc. v. Raitan Computer, Inc., 325 F.3d 1364, 1377 (Fed. Cir. 2003). See
generallyinfratbl.3 (examining cases where lower courts limited claims by the written examples).
27 See Apex Inc., 325 F.3d at 1377.
28 See id.
29 See id. at 1374-75.
30 See id. at 1374.
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Preferred Embodiments in Patents
claim limitation to the preferred embodiment." 31 The fact that the mistake is
32
common is evident from the term "classic."
For some lower court opinions, the labeling of an example as "preferred" appears
to have been the source of inspiration for the lower court's limiting the claims to
features of that embodiment, as is evident from Callicrate v. Wadsworth
Manufacturing.33 Playtex Products, Inc. v. Procterand Gamble Co., also indicates
that the mere disclosure of an example as preferred, by virtue of its appearing as a
figure (drawing), was the source of inspiration for the lower court's limiting of the
claims to features of that embodiment.3 4 The opinion wrote, "By its reliance on the
figures, the district court improperly limited claim 1 to a preferred embodiment. We
have consistently advised against this approach to claim construction." 35 RF
Delaware,Inc. v.PacificKeystone Technologies, Inc. discloses the fact-pattern where
the lower court did not follow stare decisis, that is, the rule of Laitram, but instead
had formulated an incorrect home-grown rule for claim construction. 36 Referring to
the lower court's mistake, the Federal Circuit wrote, "[t]he district court concluded
that the preferred embodiment described the entire claimed invention, because it
found correlation between the teachings of the preferred embodiment and the various
dependent claims." 37 See also, the opinion of the lower court in RFDelaware,Inc. v.
Pacific Keystone Technologies, Inc.38 In other words, it is a mistake to limit the
claims to the features found in a preferred embodiment, merely on the basis that the
features in the example and in the claims are found to track each other. 39
Table 1 discloses a number of cases where the accused infringer argued that the
claim should be limited to one or more features of a preferred embodiment. 40 This
argument was set forth before both the lower court and the Federal Circuit. 41 In a
subset of these cases, the lower court actually accepted this argument and proceeded
to import a limitation from the preferred embodiment to the claims. 42 The lower
31
Id.
32 Id.
33 427
F.3d 1361, 1367 (Fed. Cir. 2005).
The district court construed this term as "a lever pivotally mounted to a ligation
tool body such that the lever pivots about a fulcrum pin which is substantially
perpendicular to the direction in which the preformed endless loop is pulled
during the tightening operation."
The district court reached this definition
because the preferred the embodiment in the specification speaks "of a 'lever
pivotally mounted on the body of the tool."
Id. (citation omitted).
34400 F.3d 901, 906-07 (Fed. Cir. 2005).
35Id. at 907.
36 No. CV-01-PT-0348-M, 2002 U.S. Dist. LEXIS 27205, at *81, *84-85 (N.D. Ala. Apr. 21,
2002), rev'd,326 F.3d 1255, 1264 (Fed. Cir. 2003).
37 RFDel,, 326 F.3d at 1264.
38 2002 U.S. Dist. LEXIS 27205 at *81, *84-86.
39RFDel., 326 F.3d at 1264.
40 See infra tbl. 1. In preparing this article, the author reviewed all the cases from the Federal
Circuit containing the term "preferred embodiment" (over 300 cases) and then reviewed additional
cases that cited Laitram or Vitronis.
41E.g., RF Del., 2002 U.S. Dist. LEXIS 27205, at *57-60 (recounting the alleged infringer's
narrowing argument); Brief of Appellee at 18-19, RF Del., Inc. v. Pac. Keystone Techs., Inc., 326
F.3d 1255 (Fed.Cir. 2003).
42 See infra notes 43-69.
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court's practice of limiting the claims in this way is documented in the following
cases:
Liebel-Flarsheim Co. v. Medrad, Inc.,43 Abbott Laboratories v. Baxter
45
Pharmaceutical Products, Inc.,44 Acumed LLC v. Stryker Corp., Anchor Wall
Systems, Inc. v. Rockwood Retaining Walls, Inc.,46 Apex Inc. v. Raritan Computer,
Inc.,47 Burke, Inc. v. Bruno Independent Living Aids, Inc.,48 Callierate v. Wadsworth
Manufacturing,Inc.,49 Cordis Corp. v. Medtronic Ave, Inc.,50 Dayco Products, Inc. v.
Total Containment,Inc.,51 Dow Chemical Co. v. United State, 52 DSW Inc. v. Shoe
Paviion, Inc.,53 Ekehian v. The Home Depot, Inc.,5 4 Gart v. Logitech, Inc.,5 5 The
57
Gillette Co. v. Energizer Holdings, Inc.,56 Home Diagnostics, Inc. v. Lifescan, Inc.,
JEX Corp. v. Blue Pumpkin Software, Inc.,58 nteractive Gift Express, Inc. v.
Compuserve Inc.,59 Inverness Medical Switzerland GmbH v. Warner Lambert Co.,60
Karlin Technology, Inc. v. SurgicalDynamics, Inc.,61 Lampi Corp. v. American Power
Products, Inc.,6 2 Mantech Environmental Corp. v. Hudson EnvironmentalServices,
Inc.,6 3 Playtex Products, Inc. v. Procter and Gamble Co.,64 Prima Tek II, L.L. C v.
Polypap, S.A.R.L.,65 RF Delaware, Inc. v. Pacific Keystone Technologies, Inc.,66
Sandisk Corp. v. Memorex Products, Inc.,6 7 Turbocare Division of Demag Delaval
Turbomachinery Corp. v. General Electric Co.,68 and Varco, L.P. v. Pason Systems
USA Corp.6 9
Liebel-Flarsheim Co. v. Medrad, Inc.7 0 provides a typical example of the lower
court's error. In a dispute relating to patents claiming a motorized syringe and its
method of use, 71 the Federal Circuit characterized the lower court's decision as
43
358 F.3d 898, 904 (Fed. Cir. 2004).
44 334 F.3d 1274, 1279 (Fed. Cir. 2003).
45 483
F.3d 800, 807 (Fed. Cir. 2007).
340 F.3d 1298, 1309 (Fed. Cir. 2003).
47 325 F.3d 1364, 1373-74, 1377 (Fed. Cir. 2003).
48 183 F.3d 1334, 1341 (Fed. Cir. 1999).
49 427 F.3d 1361, 1367-68 (Fed. Cir. 2005).
50 339 F.3d 1352, 1356-57 (Fed. Cir. 2003).
51 258 F.3d 1317, 1326 (Fed. Cir. 2001).
52 226 F.3d 1334, 1342 (Fed. Cir. 2000).
53 537 F.3d 1342, 1346, 1348 (Fed. Cir. 2008).
54 104 F.3d 1299, 1302-03 (Fed. Cir. 1997).
55 254 F.3d 1334, 1340-42 (Fed. Cir. 2001).
56 405 F.3d 1367, 1374 (Fed. Cir. 2005).
57 381 F.3d 1352, 1355-57 (Fed. Cir. 2004).
58 122 F. App'x 458, 464-65 (Fed. Cir. 2005) (unpublished table decision).
59 256 F.3d 1323, 1339 (Fed. Cir. 2001).
60 309 F.3d 1373, 1377, 1379 (Fed. Cir. 2002).
61 177 F.3d 968, 970-73 (Fed. Cir. 1999).
62 228 F.3d 1365, 1375-76 (Fed. Cir. 2000).
63 152 F.3d 1368, 1370, 1374 (Fed. Cir. 1998).
64 400 F.3d 901, 907 (Fed. Cir. 2005).
65 318 F.3d 1143, 1149-51 (Fed. Cir. 2003).
66 326 F.3d 1255, 1260, 1262 (Fed. Cir. 2000).
67 415 F.3d 1278, 1285-86 (Fed. Cir. 2005).
68 264 F.3d 1111, 1115, 1117, 1121 (Fed. Cir. 2001).
69 436 F.3d 1368, 1371, 1375 (Fed. Cir. 2006).
70 358 F.3d 898 (Fed. Cir. 2004).
71 Id. at 901; Method of Front Loading an Injector and Injecting Fluid into Animals Therewith,
U.S. Patent No. 5,456,669 col. 13 11. 60-61 (filed Nov. 30, 1993) (issued Oct. 10, 1995); Disposable
46
Preferred Embodiments in Patents
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follows. "The district court concluded that 'the specification makes clear that the
injector includes a pressure jacket."'72 Continuing with its commentary on the lower
court's holding, the Federal Circuit added, "[b]ased largely on the fact that
the... patents do not contain any description of an injector that lacks a pressure
jacket, the district court construed all the asserted claims.., to require a pressure
73
jacket."
To repeat, the problem is that the lower courts frequently make the mistake of
construing the claims to be limited to elements or features of the invention that are
expressly disclosed in the specification, and to exclude elements that happen not to
74
be disclosed.
III.
THE NATURE OF THE SOLUTION
Where the lower court narrows a claim by importing language from an example
labeled as a "preferred," and where there is an appeal, the Federal Circuit often
75
invokes Laitram and consequently properly construes the claim more broadly.
Similarly, if the lower court narrows the claim in a way that prevents the claim from
encompassing an example labeled as "preferred," the Federal Circuit invokes
76
Vitromis, resulting in a more broadly construed claim.
Laitram and Vitronies are applied with remarkable frequency to repair claim
construction errors made by the lower courts, and have been applied with remarkable
77
success in the patentee's efforts to maintain broad claim scope.
However, labeling one or more examples in the specification as "preferred," can
introduce a level of unpredictability and can backfire, resulting in invalidation of the
claims. 78 This article discloses various techniques for arguing that a claim is invalid,
based on the labeling of an embodiment as "preferred."
IV. OUTLINE OF CLAIM CONSTRUCTION, AND How LAiTRAMAND VITRoNIcsFIT IN
Claim construction typically begins by assessing if the disputed terms in a
litigated claim have any accepted or customary meaning in the art. 79 Then the court
reviews all of the claims of the patent for contexts that might help assess meaning of
these terms.8 0 The court then reviews the specification for further contexts that
Front Loadable Syringe, U.S. Patent No. 5,658,261 col. 13 11.62-63 (filed Apr. 6, 1995) (issued Aug.
19, 1997).
72 Liebel-Flarsheim, 358 F.3d at 901.
73Id.(emphasis added).
74 See, e.g., supra notes 43-69.
75See, e.g., infra tbl.1.
76See, e.g., infra tbl.3.
77See, e.g., infra tbls. 1, 3.
78
See infra notes 355-376.
79Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995).
80
Id
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might provide meaning.8 ' For example, these contexts may take the form of an
explicit definition of the term.
As a first step in claim construction, the Federal Circuit attempts to find the
customary meaning of the claim term in the relevant technology, as used by the
person having ordinary skill in the art (PHOSITA) as of the date of filing the patent
application.8 2 This meaning can be provided by the life experiences of the judges, by
dictionaries, or by the consensus of both plaintiffs and defendants.8 3 For example in
Wenger v. Coating Machinery, the issue was the meaning of "circulation."84 The
opinion wrote that "in common parlance, it is customary to speak of 'circulating'
something once ... without 'recirculating' it a second time. '"85 In Sunrace Roots
Enterprises Co. v. SRAM Corp., the ordinary and customary meaning was assessed
86
by a consensus between all parties involved.
Explicit contexts can take two forms, definitions in the specification and
87
disclaimers set forth during the prosecution phase of the patent application.
Explicit contexts generally prevail over any ordinary and customary meaning of a
claim term.88 Explicit contexts also prevail over any weaker contexts as might be
found in the specification.8 9 The weaker contexts include a group of literary
environments known as "contexts of implication." 90
The Federal Circuit has identified four types of contexts ofimplication.91 These
particular contexts reside in the specification of the patent. 92 These four contexts,
which are weaker than explicit contexts, include global comments, statements of
advantage of the invention over a competing device, statements of disadvantages of a
competitor's device compared to the claimed invention, and statements of a repeated
and consistent nature. 93 The term contexts of "implication" was expressly used to
refer to these contexts in the cited cases. 94 For example, Hockerson-Ha]berstadt,Inc.
v. Avia Group International,Inc.set forth the role of contexts of implication:
81Id.
82 Hoescht Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996); Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
83Eg., Sunrace Roots Enters. Co. v. SRAM Corp., 336 F.3d. 1298, 1302, 1304 (Fed. Cir. 2003)
(using the consensus of both parties to define a term); Wenger Mfg., Inc. v. Coating Machinery Sys.,
Inc., 239 F.3d 1225, 1233 (2001) (using a dictionary and judge's experience to define a term).
84 239 F.3d 1225, 1231-32 (Fed. Cir. 2000).
85 Id. at 1233.
86 336 F.3d 1298, 1302 (Fed. Cir. 2003).
87 Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008).
88 Id. at 1373-74.
89 See id. at 1374.
90 See Brody, Contexts ofImplhcations, supranote 10, 56 tbl.2.
91 See, e.g., Alloc,Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368-69, 1373 (2003) (using global
comments, statement of advantage disadvantage, and statements of repeated and consistent
nature).
92
See id.
1.
93See, e.g., Alloc,Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368-69, 1373 (2003) (using global
comments, statement of advantage disadvantage, and statements of repeated and consistent
nature); see also Brody, Contexts of Impiecations, supra note 10,
1, 56 tbl. 2, 57-64 app. 3.
(discussing each context of implication and its placement in the claim construction heirarchy).
94 Bell Atlantic Network Servs., Inc. v. Covad, 262 F.3d 1258, 1268 (Fed. Cir. 2001);
Hockerson-Halberstadt, Inc. v. AVIA Group Int'l, Inc., 222 F.3d 951, 955 (Fed. Cir. 2000); Microsoft
Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340 (Fed. Cir. 2004); Microsoft Corp. v. Multi-Tech Sys.,
Inc., 357 F.3d 1340, 1356 (Fed. Cir. 2004); Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361 (2003).
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Preferred Embodiments in Patents
The court, therefore, must examine a patent's specification ... to determine
whether the patentee has given the term an unconventional meaning. See
[Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)]
(holding that "it is always necessary to review the specification to determine
whether the inventor has used any terms in a manner inconsistent with
their ordinary meaning [because the specification] acts as a dictionary when
it expressly defines terms.., or when it defines terms by implication"
(emphasis added)) ....95
Claim construction follows a predictable hierarchy. 96 First, the court tries to assess
the ordinary and customary meaning of the disputed claim term. 97 This is followed
by an exploration of any meaning that might be provided by the entire claim set, and
98
then by an exploration of the specification for explicit and implicit contexts.
Laitram and Vitrotis fit into the claim construction hierarchy, as follows. When the
court has finished reviewing the claims, and is reviewing the specification (or the
patentee's remarks in the prosecution history), the patentee can invoke these two
cases in an effort to maintain or expand claim breadth. 99
V. APPLICATION OF LAITRAMTO INCREASE CLAIM BREADTH, TO THE ADVANTAGE OF THE
PATENTEE
Table 1 lists nearly all of the available cases from the Federal Circuit where
Laitram was applied to maintain or broaden claim scope, and where the broadened
claim scope worked to the advantage of the patentee. 100
Acumed LLC v. Stryker Corp. provides a dramatic example of the application of
Laitram because the Laitram holding was separately applied to two different claim
terms. 101
Acumed concerned U.S. Pat. No. 5,472,444, which claimed a surgical nail for
inserting into bone. 0 2 The patent used the term "preferred" at seven locations,
including as the heading of a section, where the heading was, "Detailed Description
of a Preferred Embodiment," and to characterize the figures, where it recited, "FIG. 1
is a side view of a preferred embodiment of the invention."'10 3
95Hockerson-Halherstadt,222 F.3d at 955.
96Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); see Brody,
Contexts ofImpl'cations,supra note 10,
56 tbl.2.
97Vitroniks Corp., 90 F.3d at 1582; see Brody, Contexts of Impl'cations, supra note 10,
56
98Vitromtcs Coip., 90 F.3d at 1582; see Brody, Contexts of Implications, supra note 10,
56
tbl.2.
tbl.2.
99See Vitronics Coip., 90 F.3d at 1582; see also Brody, Contexts ofImpEtations, supra note 10,
56 tbl.2.
100Infra tbl. 1.
101483 F.3d 800, 806-09 (Fed. Cir. 2007).
102Id. at 802; Humeral Nail for Fixation of Proximal Humeral Fractures, U.S. Patent No.
5,472,444 col. 5 11. 44-45 (filed May 13, 1994) (issued Dec. 5, 1995).
103 444 Patent cal. 1 1. 60, col. 2 11. 5, 20, col. 3 1. 50, col. 4 11. 44, 49, col. 5 1. 4.
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The John Marshall Review of Intellectual Property Law
The disputed claim term was "curved." 10 4 The accused infringer argued that
"curved" narrowly required a "continuous" bend, meaning that the nail must be
smoothly curved, where the basis for this argument was that the patent disclosed
smoothly curved nails to have an advantage over nails manufactured by
105
competitors.
In contrast, the patentee argued that "curved" more broadly encompassed
having a "bend... without sharp corners," which encompassed smooth bends as well
10 6
as somewhat jagged bends, as found in stone archways.
The Federal Circuit held for the broader meaning, primarily because the
ordinary and customary meaning of the word "bent" broadly encompasses completely
smooth curves as well as curves occurring as fractals, e.g., curved archways made of
08
rectangular bricks. 10 7 The secondary basis for the holding was the rule of Laitram.
The court held that the accused infringer had made "an attempt to import a feature
from a preferred embodiment into the claims ...we have repeatedly warned against
confining the claims to those embodiments."'1 9 This case demonstrates that labeling
an example as "preferred" can work to the advantage of the patentee.
Another disputed claim term was "transverse." 110 The accused infringer argued
that "transverse" holes narrowly encompassed only perpendicular transverse holes."'
The basis for this argument was that the specification only disclosed transverse holes
that are perpendicular. 112 The Federal Circuit held for a broader meaning that did
not require the characteristic of perpendicular, primarily on the basis that the
perpendicular transverse hole embodiment was disclosed as a preferred
embodiment.113 Again, this case demonstrates that labeling an example as preferred
can work to the advantage of the patentee.
VI. HOLDINGS SIMILAR TO LAJTRAMIN THE EUROPEAN PATENT COURTS
Before continuing with details of United States patent law relating to preferred
embodiments, it might be pointed out that the European case law provides holdings
similar to that of Laitram.114 Inventors often file duplicates of the same patent
application in the United States and in Europe. 115 The European Patent Office
104 Acumed, 483
105
F.3d at 804.
Id. at 804-05.
106 See Brief for Plaintiff-Appellee Acumed LLC at 33-37, Acumed LLC v. Stryker Corp., Nos.
06-1260, 06-1437 (Fed. Cir. Oct. 6, 2006); see also Acumed, 483 F.3d at 804 (noting that the district
court "defined 'curved shank' as 'a shank that has a bend or deviation from a straight line without
sharp corners or sharp angles."').
107 Acumed, 483 F.3d at 805.
108See id.
109Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1334 (Fed. Cir. 2005)).
110 Id. at 807.
111 Id.
112 See, e.g., Humeral Nail for Fixation of Proximal Humeral Fractures, U.S. Patent No.
5,472,444
col. 2 11. 56-59 (filed May 13, 1994) (issued Dec. 5, 1995).
113
Acumed, 482 F.3d at 809.
114 E.g., Honeywell, Inc. (2005) T 1259/01 at 7.
115 E.g., Method and Apparatus for Piercing Ears, U.S. Patent No. 5,499,993 (issued Mar. 19,
1996) (based on International Application No. PCT/EP90/02033 (filed Nov. 27, 1990)); Method and
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Preferred Embodiments in Patents
(EPO) 116 has held that the term "preferred embodiment" is synonymous with
"optional," a situation reminiscent to that of Laitram. 117
See, for example,
Honeywell, Inc. (2005) T 1259/01, where the opinion found that, "the board observes
that the disclosure of a document has to be taken as a whole and cannot be limited to
a preferred embodiment." 118 Other cases from the EPO have found that "preferably"
is synonymous with "not necessarily have to" 119 or with "optional."'120 Hence, U.S.
patent practitioners may include the term "preferred" in their patents with the
confidence that this term can maintain claim scope in both U.S. and European
courts.
Apparatus for Piercing Ears, European Patent No. 559,637 (issued May 31, 1995) (based on
International Application No. PCT/EP90/02033 (filed Nov. 27, 1990)).
116Decisions from the European Patent Office can be found at http://www.epo.org/patents/
appeals/search-decisions.html (last visited Nov. 23, 2009).
Also instructive is DIRECTORATEGENERAL 3 (APPEALS) LEGAL RESEARCH AND ADMINISTRATION, EUROPEAN PATENT OFFICE, CASE
LAW OF THE BOARDS OF APPEAL OF THE EUROPEAN PATENT OFFICE, (Albert Ballester Rods et al.
eds., 5th ed. 2006), availableathttp://www.epo.org/patents/appeals/case-law.html.
117Colgate-Palmolive Co. v. Westone Prods. Ltd. (1999) T 0374/96 at 6.
118Honeywell, Inc. (2005) T 1259/01 at 7.
119Shell Internationale Research Maatschappig B.V. v. Sasol Tech. (Pty) Ltd. (2007) T 0016/05
at 12.
120 Colgate-Palmolive Co. v. Westone Products Ltd. (1999) T 0374/96 at 6.
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The John Marshall Review of Intellectual Property Law
Table 1. Cases Where Application of Laitram,or an Equivalent Case,
Resulted in a Holding of a Broader Claim Interpretation, Where the Broader Claim
Scope Worked to the Advantage of the Patentee.
Case
U.S. Pat.
Disputed
Narrow
Broad
No.
claim term
interpretation
interpretation
(interpretation (interpretation
favored by
favored by
accused
patentee)
infringer)
Laitram Corp. v.
Reissue
Shaft
Shaft with a
Shaft with any
Cambridge Wire
RE: 30,341
square crossnon-circular
Cloth Co. 121
section.
cross-section.
Abbott
5,990,176
Effective
The effective
Any amount of
Laboratoriesv.
amount of
amount of
water can be
Baxter
water
water must be
used as long as
Pharmaceutical
above 131
it is effective,
22
Products,Inc.1
parts per
including
million (ppm).
amounts below
and above 131
ppm.
AcumedLLC v.
5,472,444
Curved
"Curved"
"Curved"
Stryker Corp.123
narrowly
broadly
requires a
encompasses
"continuous"
smooth curves,
bend, meaning as well as
that the nail
slightly jagged
must be
curves.
smoothly
curved.
Transverse
"Transverse"
"Transverse"
holes narrowly does not
encompassed
require the
only
characteristic
perpendicular
of
transverse
perpendicular.
holes.
863 F.2d 855, 856, 862, 865 (Fed. Cir. 1988).
334 F.3d 1274, 1276-77, 1279-80 (Fed. Cir. 2003).
123 483 F.3d 800, 802-03, 804-05, 807 (Fed. Cir. 2007).
121
122
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Preferred Embodiments in Patents
Anchor Wall
Systems, Inc. v.
Rockwood
Retaining Walls,
Inc.124
5,490,363
Protrusion
Apex Inc. v.
Raritan
Computer, Inc. 125
5,937,176
Serial data
packet
Atmel Corp. v.
Silicon Storage
Technology,
Inc. 126
Burke, Inc. v.
Bruno
Independent
LivingAids,
Inc. 127
4,511,811
Increments of
charge
4,570,739
Floor pan
Callicratev.
Wadsworth
Manufacturing,
Inc. 128
5,997,553
Lever
"Protrusion"
narrowly
requires that
the claimed
masonary
block have a
central narrow
portion.
The serial data
packet must
be capable of
including both
a keyboard
signal and a
mouse signal.
Increments
must be
transferred
discretely.
The floor pan
must be sheet
metal,
The lever must
be mounted on
a pivot, where
the pivot is
mounted on
the body of the
device.
"Protrusion"
does not
require that
the masonary
block have a
central narrow
portion.
The serial data
packet need
not be capable
of including
both a
keyboard and
mouse signal.
The transfer
may or may
not be discrete.
The floor pan
may be sheet
metal, or it
may be made
of
discontinuous
pieces of
metal.
The lever did
not need to be
mounted on a
pivot.
340 F.3d 1298, 1300, 1308 (Fed. Cir. 2003).
325 F.3d 1364, 1367-68, 1375 (Fed. Cir. 2003). The accused infringer did not specifically
argue that the "serial data packet" element must be limited to the feature of the disclosed example,
but broadly argued that all the words of the claim must be limited to the various features of this
example. Id. at 1377. The Federal Circuit refused, in part, on the basis that the example was
labeled as "preferred." Id.
126 76 F. App'x 298, 300, 304-05 (Fed. Cir. 2003) (unpublished table decision).
127 183 F.3d 1334, 1336, 1339-42 (Fed. Cir. 1999).
128 427 F.3d 1361, 1363, 1367-68 (Fed. Cir. 2005).
124
125
The John Marshall Review of Intellectual Property Law
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Comark
Communications,
Inc. v. Harris
Corp.1 29
5,198,904
Video delay
circuit
The circuit
must function
to compensate
for a delay.
Cordis Corp. v.
MedtronicAve,
Inc. 130
4,739,762
Slots formed
therein
"Slots formed
therein"
requires that
the slots be
manufactured
by removing
material from
a pre-existing
wall surface.
Dayco Products,
Inc. v. Total
Containment,
Inc.131
5,199,752
Length that
is different
from
Projections
have a length
greater than
recesses,
Plurality must
mean three or
more.
The injection
rate must
follow a
formula in the
specification.
Movably
positioned
stack divider
with a track
and roller,
Plurality of
projections
Dow Chemical
Co. v. United
State 132
3,817,039
Injection rate
DSW, Inc. v. Shoe
Pavilion,Inc.133
6,948,622
Movably
positioned
stack divider
156
339
131 258
132 226
133 537
129
130
F.3d
F.3d
F.3d
F.3d
F.3d
1182,
1352,
1317,
1334,
1342,
1183,
1355,
1319,
1336,
1344,
1186-87
1356-57
1326-28
1338-39
1347-48
(Fed. Cir.
(Fed. Cir.
(Fed. Cir.
(Fed. Cir.
(Fed. Cir.
1998).
2003).
2001).
2000).
2008).
The circuit
need not
function to
compensate for
a delay.
Slots can be
formed in a
wall surface by
means other
than removing
material, such
as by
constructing
the wall with
openings built
into it.
Projections
have a length
not equal to
recesses.
Plurality
means two or
more.
The injection
rate is not
limited to the
formula in the
specification.
Movably
positioned
stack divider,
either with or
without a
track roller.
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Preferred Embodiments in Patents
Ekchian v. The
Home Depot,
Inc.134
4,624,140
Conductive
liquid-like
medium
Conductivity
must be equal
or greater to
that shown in
the
specification.
Enercon v.
United States
International
Trade
Commission.135
5,083,039
Rotating
Rotating that
must use the
technique of
rotational
transformation
Eolas
Technologies, Inc.
v. Microsoft
5,838,906
Executable
application
Standalone
computer
programs.
Any type of
computer
program.
FranklinElectric
Co., Inc. v. Dover
5,085,257
Facilitate
positioning
Facilitate
positioning
requires
physical
contact,
Gart v. Logitech,
Inc.138
4,862,165
Angular
medial
surface of a
computer
mouse
"Angular
medial
surface"
narrowly
requires a
ledge on the
computer
mouse,
Facilitate
positioning
does not
require
contact.
Contact is
optional.
"Angular
medial
surface"
broadly
encompasses
either a ledge,
or some other
structure, on
the computer
mouse.
Conductivity
can be lower or
greater than
that shown in
specification,
as long as it
can support
function as a
capacitor.
Any technique
of rotating.
Corp.136
Corp.17
104 F.3d 1299,
151 F.3d 1376,
136 399 F.3d 1325,
137 2007 U.S. App.
138 254 F.3d 1334,
134
135
1300-03 (Fed. Cir. 1997).
1378, 1384-85 (Fed. Cir. 1998).
1328, 1336 (Fed. Cir. 2005).
LEXIS 5083, at *1, *13, *17-18 (Fed. Cir. June 6, 2007).
1336, 1340, 1342 (Fed. Cir. 2001).
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The John Marshall Review of Intellectual Property Law
The Gillette Co.
v. Energizer
Holdings, Inc.139
6,212,777
Razor blade
unit
Home
Diagnostics,Inc.
v. Lifescan, Inc.140
6,268,162
Suitably
stable
endpoint
IEX Corp. v. Blue
Pumpkin
Software, Inc.141
6,044,355
Skill group
All agents in a
skill group
must possess
the same
skills,
Interactive Gift
Express, Inc. v.
Compuserve
Inc. 142
4,528,643
Authorization
code
"Authorization
code" narrowly
required a
code for
enabling the
machine to
decode the
information,
Inverness
Medical
Switzerland
GmbH v. Warner
Lambert CO. 143
5,622,871
On
"On" narrowly
means on top
of.
405
381
141 122
142 256
143 309
139
140
"Razor blade
unit" narrowly
encompasses
only a unit
with three
blades.
The endpoint
must be with
reference to
predetermined
timing.
"Razor blade
unit" broadly
encompasses a
unit with three
blades or more
blades.
The endpoint
can be either
with reference
to
predetermined
timing, by
reference to
reflectance
readings, or by
other methods.
Agents in a
skill group
must possess
one given
same skill, but
may also
possess
additional
skills.
"Authorization
code" does not
impose any
requirement
for a code that
enables the
machine to
decode
information.
"On" broadly
encompasses
on top of, as
well as soaked
within.
F.3d 1367, 1368-69, 1371, 1374 (Fed. Cir. 2005).
F.3d 1352, 1354-55 (Fed. Cir. 2004).
F. App'x 458, 459, 462, 465 (Fed. Cir. 2005) (unpublished table decision).
F.3d 1323, 1327, 1340-41 (Fed. Cir. 2001).
F.3d 1373, 1374, 1377-79 (Fed. Cir. 2002).
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Preferred Embodiments in Patents
Johnson
Worldwide
Associates, Inc. v.
Zebco Corp.14 4
5,202,835
Coupled
"Coupled"
narrowly
encompasses
only
mechanical or
physical
coupling,
Karlin
Technology, Inc.
v. Surgical
Dynamics, Inc.145
5,015,247
Series of
threads
Threads must
be periodically
interrupted to
resist
unscrewing.
Series refers to
one particular
thread having
many
interruptions,
Lampi Corp. v.
American Power
Products,Inc.146
5,169,227
Housing
having two
half-shells
The housing
must have
only two
half-shells,
Liebel-Flarshem
Co. v. Medrad,
Inc. 147
5,928,197
Physical
indicia
"Physical
indicia"
narrowly
means only
length.
"Coupled"
broadly
encompasses
mechanical,
physical, and
other types of
coupling, e.g.,
by radio
signals.
The series of
threads is like
that of any
ordinary
screw, where
there are
several
threads, each
tracking the
entire length
of the screw.
Housing more
broadly
encompasses
only two
half-shells as
well as two
half-shells
plus extra
components.
"Physical
indicia"
broadly
encompasses
length or
volume.
175 F.3d 985. 987-88, 992 (Fed. Cir. 1999).
177 F.3d 968, 969, 971-72 (Fed. Cir. 1999); Brief for Defendants-Appellants Karlin
Technology, Inc. and Sofamor Danek Group, Inc. at 28, Karlin Tech., Inc. v. Surgical Dynamics, Inc.
177 F.3d 968 (Fed. Cir. 1999); Brief for Plaintiff-Apellee Surgical Dynamics, Inc. at 21-22, Karlin
Tech., Inc. v. Surgical Dynamics, Inc. 177 F.3d 968 (Fed. Cir. 1999).
146 228 F.3d 1365, 1367, 1375-76 (Fed. Cir. 2000).
147 358 F.3d 898, 900, 912-13 (Fed. Cir. 2004).
144
145
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The John Marshall Review of Intellectual Property Law
Mantech
Environmental
Corp. v. Hudson
Environmental
Services, Inc.148
5,286,141
Well
Oiestad v. AgIndustrial
Equipment Co.,
Inc.149
4,821,486
Roller
"Well"
narrowly
requires a
structure that
must enable
both
monitoring
groundwater
and injecting
the
groundwater.
Roller must
have a pointed
end.
PlaytexProducts, 4,536,178
Inc. v. Procter&
Gamble Co.15°
Substantially
flattened
surfaces
The surfaces
must be flat
within an
established
manufacturing
tolerance,
Prima Tek II,
L.L. C. v. Polypap,
S.A..L 151
Floral holding
material
"Floral holding
material"
narrowly
requires
flowers be
inserted into
and through
the material,
5,410,856
"Well" broadly
encompasses
that structures
that could
enable either
of these
functions or
both of these
functions.
Roller has an
end that can
be pointed or
non-pointed,
i.e., merely a
projecting end.
The surfaces
must be
substantially
flat but not
narrowly
within any
established
manufacturing
tolerance.
"Floral holding
material"
broadly
encompasses
flowers
inserted into
and through,
as well as
inserted into
pre-existing
holes in the
material.
148 152 F.3d 1368, 1369, 1371, 1375 (Fed. Cir. 1998). The court did not specifically cite any
case holding that it was improper to import limitations from a preferred embodiment to the claims.
Id. at 1375. However, the court repeatedly observed that the example that had been used as the
source of the limitation, and used by the lower court for limiting the claims, was an example that
was disclosed in the specification as being "preferred." Id. at 1374-75.
149 Case No. 96-1478, 1997 U.S. App. LEXIS 18219, at *2, *4, *12-13 (Fed. Cir. July 22, 1997).
150 400 F.3d 901, 902, 906-07 (Fed. Cir. 2005).
151 318 F.3d 1143, 1145, 1147, 1149-50 (Fed. Cir. 2003).
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Preferred Embodiments in Patents
Resonate Inc. v.
Alteon
Websystems,
Inc.152
5,774,660
Transmitting
Data that is
transmitted
from the
server to the
client must
bypass the
load balancer.
RFDelaware,
Inc. v. Pacific
Keystone
Technologies,
Inc. 15 3
5,198,124
Filter bed
"Filter bed"
should
narrowly be
limited to
filter beds
with multiple
layers.
Rexnord Corp. v.
Laitram Corp.15 4
5,634,550
Portion
Multi-piece
devices
1-piece devices
and multipiece devices
SanDisk Corp. v.
Memorex
Products,Inc.155
5,602,987
Memory cell
Every memory
cell must be
partitioned.
Transmatic, Inc.
v. Gulton
Industries,Inc.156
4,387,415
Light housing
Light housing
must not
extend beyond
the associated
light cover,
Memory cells
can be either
partitioned or
nonpartitioned.
Light housing
may or may
not extend
beyond the
light cover.
338 F.3d 1360, 1361, 1365-66 (Fed. Cir. 2003).
326 F.3d 1255, 1258, 1262-64 (Fed. Cir. 2000).
154 274 F.3d 1336, 1340-41 (Fed. Cir. 2001).
155 415 F.3d 1278, 1280, 1284-86 (Fed. Cir. 2005).
156 53 F.3d 1270, 1272, 1277 (Fed. Cir. 1995).
152
153
Data that is
transmitted
from the
server to the
client may, or
may not,
bypass the
load balancer.
"Filter bed"
broadly
encompasses
filter beds that
are one-layer
embodiments
or
multiple-layer
embodiments.
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The John Marshall Review of Intellectual Property Law
Turbocare
Division of
DemagDelaval
Turbomachinery
Corp. v. General
157
Electric Co.
4,436,311
Large
clearance
position
Uniloc USA, Inc.
v. Microsoft
Corp.158
5,490,216
Licensee
unique ID
Varco, L.P. v.
Pason Systems
USA Corp.159
5,474,142
Relaying
Verizon Services
Corp. v. Vonage
Holdings Corp.160
6,282,574
Translation
"Large
clearance
position"
requires that
the outward
facing surface
of an inner
portion of a
seal ring touch
the inward
facing surface
of the casing
shoulders.
The ID must
contain
information
specific to the
user, e.g.,
credit card
number, name,
or address.
Valves used in
relaying step
must be
pneumatic
valves.
Translation
requiring
conversion of
higher level
protocol to
lower level
protocol.
"Large
clearance
position" does
not impose
this
requirement.
The ID may be
based on
personal
information, or
on other
unique
information,
e.g., the name
of the user's
employer or
church.
Valves used in
relaying step
can be any
kind of valve.
Translation
without this
requirement.
VII. CAN DIRECTING THE COURT'S ATTENTION TO THE PREFERRED EMBODIMENT, AND
INVOKING LA!TRAM, PREVAIL OVER CONTEXTS FOUND IN THE SPECIFICATION?
An accused infringer usually argues that the ordinary and customary meaning
of the disputed claim term, as well as various contexts found in the specification, all
264
290
159 436
160 503
157
158
F.3d 1111, 1113, 1123 (Fed. Cir. 2001).
F. App'x 337, 339, 342 (Fed. Cir. 2008) (unpublished table decision).
F.3d 1368, 1369, 1372, 1375 (Fed. Cir. 2006).
F.3d 1295, 1298, 1302 (Fed. Cir. 2007).
Preferred Embodiments in Patents
[9:398 2009]
militate for a narrow, restricted meaning of the disputed term. 161 In contrast, the
patentee usually argues that the ordinary and customary meaning, as well as these
contexts, all support a broader meaning. 162 But the patentee has an additional tool, a
tool usually not useful to the infringer's arguments. This tool takes the form of
163
referring to an example that is labeled as "preferred," and then invoking Laitram.
A question that arises, therefore, is this. Can the broad meaning militated by
applying Laitram prevail over the narrow meaning that is required or suggested by
various contexts found in the specification, e.g., definitions, recitations of advantage
of the invention over devices of competitors, global comments, and the like?
VIII.
EXPLICIT CONTEXTS
A. Laitram Fails to Prevail Over an Explicit Context.
Modine Manufacturing Co. v. United States International Trade Commission
provides an example where Laitram failed to prevail over an explicit context. 164 The
explicit context took the form of a disclaimer made during prosecution. 165 The
disputed claim term was "relatively small hydraulic diameter," and what was in
question was whether the diameter needed to be in the narrow range of 0.015-0.040
inches, or if the range could be as wide as 0.070 inches. 166 The opinion observed that
the smaller diameter range was the preferred embodiment, and noted the rule of
Laitram.167 However, during prosecution of the patent application, the applicant had
submitted a continuing patent application where the range of "0.015-0.070 inches"
was replaced with the narrower range, "0.015-0.040."168 Thus, the applicant had
changed the specification to recite a narrow the range, but had not changed the
claims to narrow the range. 169 This type of behavior constitutes prosecution
disclaimer. 170 The court held that the range must be the same as the narrow range
found in the preferred embodiment (0.015-0.040 inches), because "this change was
conspicuous and unambiguous."' 171 In a nutshell, an attempt to invoke Laitram failed
to maintain a broad claim scope. 172 The attempt failed because prosecution
173
disclaimer militated for a narrower interpretation.
161See, e.g., Honeywell Int'l Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1317 (Fed. Cir. 2006).
162
See, e.g., id.
See Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988) (holding
that descriptions in preferred embodiments should not limit the scope of the claims).
164 75 F.3d 1545, 1551-52 (Fed. Cir. 1996).
163
165Id.
166 Id.
at 1549, 1550-52.
at 1551; Laitram, 863 F.2d at 865.
168 Modine, 75 F.3d at 1552.
167 Id.
169 See id.
170 Purdue Pharma L.P. v. Endo Pharms. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) ("Under the
doctrine of prosecution disclaimer, a patentee may limit the meaning of a claim term by making a
clear and unmistakable disavowal of scope during prosecution.").
171 Modine, 75 F.3d at 1552.
172 See id. at 1551.
173 See Purdue Pharma,438
F.3d at 1136 (defining the doctrine of prosecution disclaimer).
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Similarly, Jinik Co. v. International Trade Commission discloses the fact
pattern where an explicit context (prosecution disclaimer) governed the meaning of
the claim, where this meaning was narrow and was confined to that set forth in the
preferred embodiment. 174 The disputed claim term was "mixture," where the
disclaimer militated that "mixture" only encompassed mixtures having a high ratio of
175
liquid binder to powdered matrix.
To conclude, it is unlikely that Laitram can ever prevail over an explicit context,
176
that is, explicit definitions and prosecution disclaimers.
IX.
CONTEXTS OF IMPLICATION
Statements of advantage, as they might appear in the written description part of
a patent, are a common type of implicit context. 177 This means that the patent
discloses that the invention has one or more advantages over devices or compositions
manufactured by a competitor. 178 Statements of advantages were used as part of the
basis for arriving at the meaning of a claim term in the following opinions. In Tronzo
v. Biomet, Inc., the advantage was that competing devices were inferior. 179 In Gaus
v. Conair Corp., the advantage was preventing electric shock.180
In
Hockerson-Halberstadt,Inc v. A VIA Group International,Inc., the advantage was
cushioning.181 In Sofamor Danek Group, Inc. v. DePuy-Motech, Inc., the advantage
was eliminating awkward bulkiness.18 2 Further examples are provided in the
footnote.18 3 Although it is a tradition in patent drafting to label one or more
examples as having some advantage over competing devices or compositions,184 this
technique frequently works against the patentee during litigation, by inspiring the
174362 F.3d 1359, 1364-66 (Fed. Cir. 2004).
175Id. at 1365-66.
176 See e.g., id.; Modine, 75 F.3d at 1551.
177 See, e.g., Gaus v. Conair Corp., 363 F.3d 1284, 1289-90 (Fed. Cir. 2004) (limiting the patent
claims based on the advantages of the invention over the prior art as stated in the specification).
178 E.g., Protective Mechanism in Electrically Operated Devices, U.S. Patent No. 4,589,047 col.
2 1. 55-61 (filed Mar. 4, 1983) (issued May 13, 1986); Gaus, 363 F.3d at 1289.
179 156 F.3d 1154, 1159 (Fed. Cir. 1998).
180 363 F.3d 1284, 1285, 1289 (Fed. Cir. 2004).
181 222 F.3d 951, 956 (Fed. Cir. 2000).
182 74 F.3d 1216, 1220 (Fed. Cir. 1996).
18
3 Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1368-69 (Fed. Cir. 2003) (the advantage
was play between floor boards); TAP Pharm. Prods., Inc. v. Owl Pharms., L.L.C., 419 F.3d 1346,
1348-49 (Fed. Cir. 2005) (the advantage was improved stability); Seachange Int'l, Inc. v. C-COR,
Inc., 413 F.3d 1361, 1366, 1369-70 (Fed. Cir. 2005) (the advantage was more efficient use of the read
and write bandwidth); Phillips v. AWH Corp., 415 F.3d 1303, 1335-36 (Fed. Cir. 2005) (en banc) (the
advantage was that a baffle disposed at a more acute angle could deflect bullets); Toro Co. v. White
Consol. Indus., Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999) (the advantage was automatic removal of a
ring); Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd., 401 F.3d 1367, 1368-69, 1371-72
(Fed. Cir. 2005) (the advantage was improved stem stabilization); Gen. Am. Transp. Corp. v. CryoTrans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996) (the advantage was that all parts of the load will be
more uniformly maintained at the desired low temperature).
184 See D. C. Toedt, Reengineering the Inventor Interview, 78 J. PAT. & TRADEMARK OFF.
SOC'Y, 19, 26-27 (1996).
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court to narrow the claims in a way that is aligned with one or more features of the
advantageous embodiment.185
Statements of a repeated and consistent nature, another type of context of
implication, are often used by the Federal Circuit to narrow the scope of a disputed
claim.18 6 Examples of this type of implicit context are disclosed in the footnoted
cases.187
The following provides a concrete example of a repeated and consistent
statement. Union Oil Co. of California v. Atlantic Richfield Co. concerned a patent
that claimed a type of gasoline. 8 8 The dispute was whether the claim covered any
type of gasoline, e.g., for commuter automobiles, race cars, and airplanes, or if it
narrowly encompassed only gasoline for commuter autos. 8 9 The opinion observed
that the specification repeatedly and consistently referredto use of the gasoline in
ordinary commuter automobiles. 190 At four points in the patent, the specification
disclosed air pollution. 191 Also, the patent disclosed that the claimed gasoline had
been tested in ordinary commuter automobiles, Oldsmobile Calais, Ford Tempo,
Honda Accord, Plymouth Shadow, Chevrolet Suburban. 192 On the basis of the
repeatedand consistent disclosures relating to commuter autos (and not to race cars
or to aviation) the court held that the claim to a gasoline must encompass only
gasolines suitable for passenger cars. 193
A further implicit context is the global comment. 194 The phrase, "present
invention" is sometimes interpreted to be a global comment. 195 Global comment
means that the elements found in a particular embodiment (labeled as "present
invention") apply to all embodiments of the invention that are encompassed by the
claims. 196 In a number of cases, the Federal Circuit found that the term "present
invention," when used to refer to an example, was a global comment that must limit
E.g., Gaus,363 F.3d at 1289.
See, e.g., infra note 187.
187 Fuji Photo Film Co., Ltd. v. Int'l. Trade Comm'n., 386 F.3d 1095, 1098-99 (Fed. Cir. 2004)
(relying on the repeated term "opening"); Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1367
(Fed. Cir. 2003) (relying on the repeated term "play"); Union Oil Co. of Cal. v. Atl. Richfield Co., 208
F.3d 989, 996 (Fed. Cir. 2000) (depending on repeated statements relating to use in ordinary
185
186
commuter automobiles); Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1370 (Fed. Cir. 2000)
(looking to the repeated term "protecting"); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295,
1301-02 (Fed. Cir. 1999) (relying on repeated statements regarding the attachment of a restriction
ring); Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477-78 (Fed. Cr. 1998) (looking
to repeated statements regarding how envelopes degrade); Bell Commc's Research, Inc. v. Fore Sys.,
Inc., 62 F. App'x 951, 956-57 (Fed. Cir. 2003) (unpublished table decision) (depending on repeated
statements which related to the simultaneous transmission of empty frames).
188 208 F.3d 989, 992 (Fed. Cir. 2000).
189 Id. at 995.
190 Id. at 995-96.
191 Gasoline Fule, U.S. Patent No. 5,288,393 col. 11. 9-16, 33-40, col.16 11. 2-8, col.17 11.
40-44
(filed Dec. 13, 1990) (issued Feb. 22, 1994).
192 Id. figs.7-9; Union Ol, 208 F.3d at 996.
193Union Oil, 208 F.3d at 996.
194 See, e.g., C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004); Digital
Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998); Pliant Corp. v. MSC Mktg. &
Tech., Inc., 416 F. Supp. 2d 632, 643 (N.D. Ill. 2006).
195 E.g., IP Innovation, L.L.C. v. Ecollege.com, 156 F. App'x 317, 322 (Fed. Cir. 2005)
(unpublished table decision).
196 See C.R. Baird,388 F.3d at 864.
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the claims to features found in that example. 197 Although it is a tradition in patent
drafting to label one or more examples as the "present invention,"'19 this technique
frequently backfires against the patentee during litigation, by inspiring the court to
narrow the claims in a way that is aligned with specific features of the embodiment
200
so labeled. 199 Concrete examples are found in the footnote.
A. Laitram Can PrevailOver Contexts ofImpAcation
Northrop Grumman Corp. v. Intel Corp. concerned U.S. Pat. No. 4,453,229,
which claimed a component (bus interface unit) of a computer system. 20 1 The accused
infringer argued, and the lower court agreed, that the claim should be limited to a
bus interface unit that used a "command/response protocol."202 The basis for limiting
the claim was that "[t]he patent refers repeatedly to the advantagesof the invention
in that context. ."... 203 But the Federal Circuit expressly observed that this
embodiment was labeled as a preferred embodiment.2 0 4 In face of a context of
implication (a disclosure of advantage), and in face of the lower court's holding that
the claim must be limited on the basis of this advantage, the Federal Circuit
reversed, applied the rule of Laitram, and refused to limit the claim.20 5 Laitram
prevailed over a context of implication.
Also, in Uniloc USA, Inc. v. Microsoft Corp. the accused infringer (and the
dissent) argued that a term referring to the identity of a licensee must be narrowly
based on personal information, such as the licensee's name or home address.2 06 This
argument was based on a context of implication -- a repeated and consistent
disclosure found in the specification.20 7 But the majority observed that the example
197Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006); nCube Corp.
v. Seachange Int'l, Inc. 436 F.3d 1317, 1329-30 (Fed. Cir. 2006) (Dyk., J., dissenting); C.R Bard,388
F.3d at 864; Scimed Life Sys. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-45 (Fed.
Cir. 2001); IP Innovation, 156 F. App'x at 321-22; Ocean Innovations, Inc. v. Archer, 145 F. App'x
366, 370-71 (Fed. Cir. 2005) (unpublished table decision).
198See, e.g., Electrostatically Dissipative Fuel System Component, U.S. Patent No. 5,164,879
col. 1 11. 26, 40, col. 3 1.41 (filed July 1, 1991) (issued Nov. 17, 1992).
199See, e.g., infra note 200.
200 nCube Corp. v. Seachange Int'l, 436 F.3d 1317, 1329 (Fed. Cir. 2006) (Dyk, J., dissenting)
(stating that the use of the term "present invention" is strong evidence that the use applies to the
invention as a whole). Gaus v. Conair Corp., 363 F.3d 1284, 1289-90 (Fed. Cir. 2004) (identifying a
global comment by the phrase, "according to the invention," and another global comment identified
by the phrase, "the object of the invention," and limiting the claims to the features disclosed by these
phrases).
201 325 F.3d 1346, 1347, 1349 (Fed. Cir. 2003); Bus Interface Unit, U.S. Patent No. 4,453,229
(filed Mar. 11, 1982) (issued June 5, 1984).
202 Northrop Grumman, 325 F.3d at 1355.
203 See id. (emphasis added).
204 Id.
205 Id. at 1355-56.
206 290 F. App'x 337, 342, 345 (Fed. Cir. 2008) (unpublished table decision).
207 See id. at 342; Brief of Defendant-Appellee at 45-46, Uniloc USA, Inc. v. Microsoft Corp.,
290 F. App'x 337 (Fed. Cir. 2008) (No. 2008-1121).
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Preferred Embodiments in Patents
was a preferred embodiment, applied the rule of Laitram, and held for a broader
meaning of the term.U8 Thus, Laitramprevailed over the implicit context.
Similarly, in Northern Telecom Ltd. v. Samsung Electronics Co., Ltd. the
accused infringer argued that a claim to aluminum etching should be limited to
exclude "ion bombardment" on the basis of a context of implication, namely, the
patent's disclosure that ion bombardment had the disadvantage of causing
damage. 20 9 The Federal Circuit refused to limit the claim, on the basis that the
patent expressly disclosed that reduced or excluded ion bombardment was merely a
preferred embodiment.210 The court applied the rule of Laitram, and refused to limit
the claim.211 Laitram trumped over the implicit context.
B. Laitram Fails to PrevailOver a Context of Implication
Table 2 discloses opinions where a narrower meaning of a claim term, as
suggested by a context of implication, prevailed over the broader meaning dictated by
applying Laitram.212 The fact that contexts of implication trumped over Laitram
demonstrates that Laitram is a relatively weak doctrine.
Astrazeneca AB v. Mutual Pharmaceutical Co., Inc. concerned U.S. Pat. No.
4,803,081, which claims a drug formulation consisting of an active drug combined
with a solubilizer.2 13 The disputed claim term was "solubilizer. 214 The accused
infringer argued that "solubilizer" narrowly encompassed only surfactants (and to
exclude co-solvents), while the patentee argued that "solubilizer" broadly
encompassed surfactants and co-solvents.2 15 The Federal Circuit observed that the
specification disclosed surfactants as the preferred embodiment and recognized the
rule of Laitram,writing, "it is of course improper to limit the claims to the particular
preferred embodiments described in the specification ....216
But unfortunately for the patentee, the Federal Circuit also observed various
contexts that appeared to dictate the meaning of "solubilizer," writing that, "[t]he
specification may define claim terms 'by implication' . ...
"217
Three contexts of
implication were found in the specification: ( 1 ) Repeated and consistent disclosure;
218
(2 ) Global comment; and ( 3 ) Recitation of advantage.
To view the big picture, the rule of Laitram was overwhelmed by the various
contexts of implication, and the court held for a narrow meaning, to the disadvantage
219
of the patentee.
Uniloc, 290 F. App'x at 342-43.
215 F.3d 1281, 1293 (Fed. Cir. 2000); Brief of Defendants-Cross Appellants at 41, N.
Telecom Ltd. v. Samsung Elec. Co., 215 F.3d 1281 (Fed. Cir. 2000) (Nos. 99-1208, 99-1227).
210 N. Telecom, 215 F.3d at 1293.
208
209
211
Id.
See infra tbl.2.
384 F.3d 1333, 1335-36 (Fed. Cr. 2004); New Pharmaceutical Preparations with Extended
Release,
U.S. Patent No. 4,803,081 (filed Apr. 3, 1987) (issued Feb. 7, 1989).
214
Astrazeneca, 384 F.3d at 1336.
215 Id. at 1336, 1338.
216 Id. at 1340.
217 Id. at 1339.
218 See id. at 1338-41.
219 See id. at 1341.
212
213
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Preferred Embodiments in Patents
Table 2. Context of Implication Prevails over Laitram.
The Preferred Context of Implication
Holding
Embodiment
Astrazeneca AB
Solubilizers
Three different
The court narrowed
v. Mutual
that are
contexts of
the claim to the
Pharmaceutical surfactants
implication: repeated
preferred
Co., Inc.220
and consistent
embodiment.
comments about
surfactants; global
comment about
surfactants; and
advantage of
surfactants.
BellAtlantic
Mode that is
Repeated and
The court narrowed
Network
conventional,
consistent use of
the claim to the
Services, Inc. v.
bi-directional,
"mode" and "rate" to
preferred
Covad
or reversible
refer to separate
embodiment.
Communications (but no
concepts.
Group, Inc. 221
disclosure of
modes with
varied rates)
Black & Decker, Power
Repeated disclosure of The court narrowed
Inc. v. Robert
conversion
power conversion
the claim to the
Bosch Tool
circuit with a
circuit with a DC/DC
preferred
Corp.222
DC/DC
converter,
embodiment.
22 3
converter
Dentsply
The tip of a
Repeated and
The court narrowed
International,
dental tool is
consistent disclosure
the claim to the
Inc. v.
disclosed as a
that the tip is a
preferred
Hu -FriedyMfg.
separate
separate attachment,
embodiment.
Co., Inc.22 4
attachment.
Global comment that
the tip is a separate
attachment.
Gentry Gallery,
Controls are
Repeated and
The court narrowed
Inc. v. Berkline
on the sofa's
consistent disclosures
the claim to the
Corp.2 25
console
of controls being
preferred
mounted on the
embodiment.
console.
Case
220 384 F.3d 1333, 1339-40, 1342 (Fed. Cir. 2004).
221 262 F.3d 1258, 1270-71, 1273 (Fed. Cir. 2001).
222 260 F. App'x 284, 288-89 (Fed. Cir. 2008) (unpublished table decision).
223 Id. at 288. Though the specification failed to explicitly indicate the "preferred embodiment,"
the court looked to the prosecution history in deciding which embodiment was "preferred." See id. at
289; see Ruggedized Tradesworkers Radio, U.S. Patent No. 6,308,059 (filed Dec. 11, 1998) (issued
Oct. 23, 2001) (failing to explicitly identify a "preferred embodiment").
224 202 F. App'x 464, 467-68 (Fed. Cir. 2006) (unpublished table decision).
225 134 F.3d 1473, 1478-79 (Fed. Cir. 1998).
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RenishawPLC
v. Marposs
Societa'Per
Azioni 226
VLT, Inc. v.
Artesyn
Technologies,
Inc.227
Wang
Laboratories.
Inc. v. America
Online, Inc. 228
The John Marshall Review of Intellectual Property Law
When a probe
(or stylus)
touches the
workpiece and
deflects, a
signal occurs
at about the
exact moment
of touching
A current
mirror that
maximizes
flux swing,
and entailing
that all the
magnetizing
energy be
returned to
the
transformer.
A frame that
is a characterbased protocol
Repeated and
consistent disclosures
that when the probe
touches the workpiece,
a signal occurs at
about the exact
moment of touching.
The court narrowed
the claim to the
preferred
embodiment.
Repeated and
consistent disclosure a
current mirror that
maximizes flux swing,
thus entailing that all
the magnetizing
energy be returned to
the transformer.
The court narrowed
the claim to the
preferred
embodiment.
Repeated and
consistent comments
about character-based
protocol.
The court narrowed
the claim to the
preferred
embodiment.
The exceptional power of Laitram derives from the following sources. First,
Laitram generally prevails because stronger bases for arguments, such as explicit
definitions, usually do not exist in patents, and therefore cannot be used in
2 29
arguments by the accused infringer.
Second, it is easy to articulate an argument based on Laitram. All it requires is
directing the court's attention to an example labeled as "preferred" and requesting
230
that the claims not be limited to features of that example.
Third, the Federal Circuit is unusually willing to apply Laitram, even as the
primary or only argument in claim construction.2 31 This willingness to apply
Laitram contrasts with the Federal Circuit's view of another weak doctrine of claim
construction, the doctrine of claim differentiation.2 32 The court has characterized
226 158 F.3d 1243, 1252-53 (Fed. Cir. 1998).
227 103 F. App'x 356, 359-60 (Fed. Cir. 2004) (unpublished table decision).
228
197 F.3d 1377, 1381-82 (Fed. Cir. 1999).
229
Compare supra tbl.1 (listing thirty-nine cases where the rule of Laitraim prevailed), with
supra tbl.2 (listing eight cases where the rule of Laitram did not prevail).
230 See Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1988).
231 See, e.g., supra tbl.1.
232 See Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)
("[T]he doctrine of claim differentiation cannot broaden claims beyond their correct scope,
determined in light of the specifcation and the prosecution history and any relevant extrinsic
evidence.") (emphasis added).
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Preferred Embodiments in Patents
claim differentiation as a "limited tool of claim construction" 233 or that "it is not a
hard and fast rule of construction." 234 The Federal Circuit has never discounted
Laitram in this manner.
X. MEANS PLUS FUNCTION CLAIMS
The Federal Circuit has provided very little guidance as to how Laitram impacts
means plus function claims. The available guidance is as follows. Means plus
function claims find a statutory basis in 35 U.S.C. § 112, paragraph six. 235 This type
of claim represents a special situation in patent law, as claim construction requires a
review of the specification for structures that correspond to the function recited in
the claims, and then limiting of the claims to encompass only these structures, and
their equivalents. 236 The means plus function claim uses a recitation of function as a
surrogate for one or more parts of a machine, device, or chemical composition. 237 In
construing a means plus function claim, the meaning of the functional term must be
limited to an example, e.g., a structure or composition, recited in the specification, or
238
to its equivalent.
Where the court encounters a particular example disclosed in the specification,
an issue that might arise is whether the claim is to be broadly applied to all the
features of that particular example, or if the claim must more narrowly be confined
239
by requiring the recitation of all elements found in all of the examples.
Versa Corp. v. Ag-Bag International Ltd. concerned U.S. Pat. No. 5,426,910,
which claimed a machine that fills bags with compost. 240 The specification of the
patent disclosed a machine that contained two structures used for introducing air
into the bags, namely, a flute and a perforated pipe. 241 The issue was whether the
term "means" in the claim phrase, "means for creating air channels" absolutely
required the presence of both a flute and perforated pipe, or merely required a
242
perforated pipe and optionally a flute.
The accused infringer, Ag-Bag, made a machine that did not include a flute. 243
Ag-Bag wanted to escape a holding of infringement. Therefore, Ag-Bag argued that
244
the claim absolutely required that the claimed machine contain a flute.
233 Curtiss-Wright Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1378 (Fed. Cir. 2006).
234 Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 2000) (quoting Comark
Commc'ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (1998).
235 35 U.S.C. § 112 (2006).
236 Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1360 (Fed. Cir. 2000); see U.S.
PATENT
& TRADEMARK OFFICE,
U.S. DEP'T OF COMMERCE,
MANUAL OF PATENT EXAMINING
PROCEDURE § 2181 (8th ed., 7th rev. 2008) [hereinafter MPEP].
237 See 35 U.S.C. § 112.
238 See Kemco Sales, 208 F.3d at 1361-62.
239 See Evan Finkel, Means-Plus-Ends Function Claims in Light of Donaldson and Other
Recent Case Developments, 10 SANTA CLARA COMPUTER & HIGH TECH. L.J. 267, 270-71 (1994).
240 392 F.3d 1325, 1326 (Fed. Cir. 2004); Means for Creating Air Channels in Bagged Compost
Material, U.S. Patent No. 5,426,910 (filed Mar. 21, 1994) (issued June 27, 1995).
241
242
Id. col. 3 11. 5-37.
Versa Corp., 392 F.3d at 1328.
243 Id.
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In reviewing the specification for a structure corresponding to the claim term
"means," the Federal Circuit observed that the specification disclosed text and
245
drawings showing the presence of both a flute and perforated pipe.
But the court also observed that the specification recited, "It is believed that
sufficient air will be present to achieve decomposition with either the channels 48 or
the perforated pipe 50 although it is preferredthat both the flutes 46 and the pipe 50
be utilized." 246 Apparently, the specification's use of the term "preferred" helped
persuade the court that a machine using both a flute and a pipe was optional and
247
held, "[w]e conclude that, in light of this disclosure, flutes are not essential."
Because flutes were optional, Ag-Bag was found to infringe. 248 The Versa v. Ag-Bag
holding worked to the advantage of the patentee. It can be seen that Versa v. Ag-Bag
is similar to Laitram, in that both cases find that the term "preferred," as it might
249
appear in the specification, is synonymous with the word, "optional."
XI. BROADENING CLAIM SCOPE UNDER VITRONICS
Vitronis holds that claims should usually not be construed in a way that
excludes the preferred embodiment. 250 Table 3 discloses a number of cases where
Vitronis was applied, and where the result worked to the advantage of the patentee.
2 52
Neomagic v. Trident Microsys, Inc.2 5 1 and Rhodia Chimie v. PPG Industrie
represent dramatic examples of the application of Vitronics to broaden or maintain
25 3
claim scope.
A. NeoMagic v. Trident Microsys (Fed. Cir. 2002)
NeoMagic Corp. v. Trident Microsys, Inc. concerned U.S. Pat. No. 5,703,806,
which claimed an integrated circuit. 254 The patent contained a section heading
reading, "Description of the Preferred Embodiment(s)," as well as a statement
applying to all the examples.25 5
This statement read, "Therefore, while the
244 Brief of Defendant-Appellee at 10, Versa Corp. v. Ag-Bag Int'l Ltd., No 03-1445 (Fed. Cir.
Sept. 19, 2003).
245 Versa Corp., 392 F.3d at 1328-29.
246 Id. at 1329 (citing '910 Patent col. 3 II. 29-34) (emphasis added).
247
Id.
Id. at 1331.
Compare Versa Corp. v. Ag-Bag Int'l Ltd., 392 F.3d 1325, 1329 (Fed. Cir. 2004) (concluding
that because flutes were preferred they were not required), with Laitram Corp. v. Cambridge Wire
Cloth Co., 863 F.2d 855, 865 (Fed. Cir. 1989) ("References to a preferred embodiment, such as those
often present in a specification, are not claim limitations.").
250 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
251 287 F.3d 1062 (Fed. Cir. 2002).
252 402 F.3d 1371 (Fed. Cir. 2005).
253 See id. at 1377; NeoMagic Corp., 287 F.3d at 1074.
254 287 F.3d 1062, 1068 (Fed. Cir. 2002); Graphics Controller Integrated Circuit Without
Memory Interface, U.S. Patent No. 5,703,806 col. 10 11.21-35 (filed Aug. 16, 1996) (issued Dec. 30,
1997).
255 '806 Patent col. 2 11. 55-56, col. 10 11. 4-8.
248
249
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Preferred Embodiments in Patents
description above provides a full and complete disclosure of the preferred
embodiments of the present invention ....
The disputed claim term was "power supply." 25 7 The accused infringer argued,
and the lower court agreed, that "power supply" narrowly requires a constant
voltage. 258 The patentee argued that "power supply" more broadly encompasses
25 9
devices that have a constant voltage and also devices with a fluctuating voltage.
The Federal Circuit observed that the preferred embodiment of the claimed
power supply likely shows a degree of fluctuation. 260 In observing that the preferred
embodiment likely has some degree of fluctuation, the court cited Vitronics, writing
that "[ilt is elementary that a claim construction that excludes the preferred
embodiment 'is rarely, if ever, correct. . . ."'261 The argument deriving from Vitronies
was the only argument used by the Federal Circuit applied to the claim term "power
supply." 26 2 This case dramatically demonstrates that labeling an embodiment as
preferred can work to the advantage of the patentee, particularly in situations where
26 3
no other arguments are available.
B. Rhodia Chimie v. PPG Industries (Fed. Cir. 2005)
C imie v. PPG Industries concerned U.S. Pat. No. 6,013,234, which claimed
silica particles. 26 4 The disputed claim term was "dust-free and non-dusting." 265 The
accused infringer argued that this term narrowly meant no dust whatsoever. 26 6 The
patentee argued that the term more broadly meant very low dust, thus encompassing
a range of dust levels. 267 The Federal Circuit held for the broader interpretation,
primarily on the basis of Vitronis. 268 The opinion applied Vitronies, writing,
"[b]ecause ... 'no dust cloud whatsoever,' would not read on the preferred
embodiment, we agree.., that a person of ordinary skill in the art would not
269
interpret this term in that manner."
Labeling an embodiment as a preferred embodiment worked to the advantage of
the patentee. 270 This case demonstrates that Vitronics can be the first argument to
271
which the court turns in the exercise of claim construction.
Id. col. 10 11.4-6.
NeoMagic Corp., 287 F.3d at 1069.
258 Id. at 1073.
259 See id. at 1074.
260Id.
256
257
261 Id. (emphasis added) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583
(Fed. Cir. 1996)).
262
263
See id.
See id.
264
402 F.3d 1371, 1374-75 (Fed. Cir. 2005); Silica Pigment Particulates, U.S. Patent No.
6,013,234 col. 13 11.60-67 (filed June 7, 1995) (issued Jan. 11, 2000).
265 Rhodia Chime, 402 F.3d at 1374.
266 Id. at 1375.
267 Id.
268 Id. at 1377.
269
Id.
See id. (concluding that "dust free" and "non-dusting" does not narrowly mean "no dust
cloud whatsoever").
271 See id. (omitting other theories of support for the Court's construction).
270
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The John Marshall Review of Intellectual Property Law
Table 3. Cases Where application of Vitronics Resulted in a Holding of Broader
Claim Interpretation, Where the Broader Claim Scope Worked to the Advantage of
the Patentee.
Case
Patent
Disputed
Narrow
Broad
claim term
interpretation
interpretation (or
(or
interpretation
interpretation
favored by
favored by
patentee)
accused
infringer)
American
5,888,038
Means for
Locked directly
Locked either
Seating Co. v.
engaging
to the floor of
directly or
USSC Group,
being locked
the vehicle
indirectly to the
Inc.272
to said
floor of the
vehicle
vehicle
Amgen Inc. v.
5,955,422
Purified
Purified from
Purified from
Hoechst Marion
cell culture
cells or from cell
Roussel, Inc.273
medium only
culture medium
Automed
6,449,927 Vibratory
Exclusively
Exclusively
Technologies,
dispenser
vibratory
vibratory or
Inc. v. Microfil,
vibration in
LLC274
conjunction with
gravity
Bowers v.
4,933,514
Each
All
At least two
Baystate
groups
Technologies,
Inc. 275
Burke, Inc. v.
4,570,739
Floor pan
The floor pan
The floor pan
Bruno
must be in a
may be in a
Independent
single flat plane
single flat plane
Living Aids,
or in multiple
Inc.27 6
plane
Cytologix Corp. 6,180,061
Separate
Connections
Connections
v. Ventana
electrical
must be off of a
could be either
Medical
power
platform
on or off a
Systems, Inc.277
connections
platform
272
273
274
275
276
277
91 F. App'x 669, 671-73 (Fed. Cir. 2004) (unpublished table decision).
314 F.3d 1313, 1319, 1348-49 (Fed. Cir. 2003).
244 F. App'x 354, 356, 358 (Fed. Cir. 2007) (unpublished table decision).
320 F.3d 1317, 1322, 1332 (Fed. Cir. 2003).
183 F.3d 1334, 1335-36, 1340-41 (Fed. Cir. 1999).
424 F.3d 1168, 1169, 1174-75 (Fed. Cir. 2005).
[9:398 2009]
Dow Chemical
Co. v.
Sumitomo
Chemical Co.,
2
Ltd. 78
Gentry Gallery,
Inc. v. Berkline
Preferred Embodiments in Patents
4,499,255
Boiling point
Place
thermometer in
liquid
Place
thermometer in
vapor above
liquid
5,064,244
Fixed
Attachment
with no part can
move or pivot
Glaxo Group
Ltd. v. Apotex,
Inc.280
4,562,181
Purity of at
least 95%
Globetrotter
Software, Inc.
v. Elan
Computer
Group, Inc. 281
5,390,297
Prevent
Hoechst
Celanese Corp.
v. BP
Chemicals
4,615,806
Stable
Impurities could
include
unwanted
contaminants as
well as
additives
Required
the claim to
require the
software
to actively
prevent a
program from
running, when
no license is
available
Resin must not
change more
than 50% in
volume
Attachment
where there is, or
is not, moving or
pivoting
Impurities mean
only unwanted
contaminants
Corp.2 79
Software can
either allow or
prevent a
program from
running, when
no license is
available
Resin must not
change more
than 50% in
diameter
Ltd.282
IEX Corp. v.
6,044,355
Blue Pumpkin
Software,
Inc.28 3
Invitrogen
4,981,797
Corp. v.
Biocrest
Manufacturing,
L.P.284
278
279
280
281
282
283
284
Skill group
Skill group
consists of a
group of agents
Skill group
consists of one or
more agents
Growth
Growth at 180320, but never
growth at
higher
temperatures
Growth at 180320, with or
without growth
at a higher
temperature
257 F.3d 1364, 1367, 1374-75, 1378 (Fed. Cir. 2001).
134 F.3d 1473, 1474, 1476-77 (Fed. Cir. 1998).
376 F.3d 1339, 1342, 1346-47 (Fed. Cir. 2004).
362 F.3d 1367, 1368, 1379-81 (Fed. Cir. 2004).
78 F.3d 1575, 1579-81 (Fed. Cir. 1996).
122 F. App'x 458, 459, 464-65 (Fed. Cir. 2005) (unpublished table decision).
327 F.3d 1364, 1366-69 (Fed. Cir. 2003).
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The John Marshall Review of Intellectual Property Law
Mattox v.
Infotopia,
Ine.28 5
5,499,961
Support
Gliding on a
support requires
a support that is
a guide track
MBO
Laboratories,
Inc. v. Becton,
Dickinson &
Reissue
Patent
No.
36,885
Adjacent
Required
connection of
the flange to the
body
Microsoft Corp.
v. Multi-Tech
Systems, Inc.28 7
Moba, B. V v.
Diamond
Automation,
Inc.288
Nelleor Puritan
Bennett, Inc. v.
Masimo
Corp.28 9
NeoMagic Corp.
v. Trident
Mirosys,
Inc.290
5,764,627
Speaker
phone
4,519,494
Urge
Speaker phone
requires a
housing
Urge requires a
downward force
Speaker phone
does not require
a housing
Urge more
broadly means to
move
4,934,372
Attenuated
and filtered
Completely
removed
5,703,806
Power
supply
Power supply
with constant
voltage
Oatey Co. v.
IPS Corp.29 1
6,148,850
First and
second
juxtaposed
drain ports
Drain ports
totally separate
Completely
removed or not
eliminated
altogether
Power supply
with constant
voltage or a
degree of
fluctuation
Drain ports
either totally
separate, or
consisting of one
port with a
dividing wall
(partition) inside
Gliding on a
support
encompasses a
support that can
be a guide rack,
or merely a floor
"Next to," i.e.,
either connected
or non-connected
Co. 286
285
286
287
288
289
290
291
136
474
357
325
402
287
514
F. App'x 366, 366, 368 (Fed. Cir. 2005) (unpublished table decision).
F.3d 1323, 1326, 1328, 1333 (Fed. Cir. 2007).
F.3d 1340, 1342, 1353-54 (Fed. Cir. 2004).
F.3d 1306, 1309, 1316-17 (Fed. Cir. 2003).
F.3d 1364, 1365-67 (Fed. Cir. 2005).
F.3d 1062, 1069, 1073-74 (Fed. Cir. 2002).
F.3d 1271, 1272, 1275-76 (Fed. Cir. 2008).
[9:398 2009]
Preferred Embodiments in Patents
On-Line
5,440,143
Technologies,
Inc. v.
Bodensee werk
Perkin-Elmer
GMBH2 92
Osram GMBH
6,066,861
v. International
Trade
Commission 93
PandrolUSA,
5,110,046
LP v. Airboss
Railway
Products,
Inc. 294
Mirror
Only spherical
mirrors
Spherical or
toroidal mirrors
Mean grain
diameter
Mean grain
diameter, where
the mean was
volumetric
Adhering
material
requires
bonding
Mean grain
diameter, where
the mean was
number-based
Adhering
material
encompasses
attachment by
bonding and nonbonding methods
Form sets with
either one sheet
of paper (single
ply) or several
sheets of paper
(multi-ply)
To come in
contact with
Adhering
material
Paymaster
Technologies,
Inc. v. United
State82 95
5,292,283
Form set
Form sets must
have one sheet
of paper (single
ply)
Primes,Inc. v.
Hunter's
Specialties,Inc.
5,520,567
Engaging
Sealing
6,013,234
Dust-free
and
non-dusting
Memory cell
Absolutely no
dust
Relatively free of
dust
Every memory
cell must be
partitioned
Destination
address
Address
encompasses
only the final
destination,
Memory cells can
be either
partitioned or
non-partitioned
Address
encompasses
intermediate
and/or final
destinations
296
Chimie v. PPG
Industries,
Inc. 297
Sandisk Corp.
v. Memorex
Products,
Inc. 298
Verizon
Services Corp.
v. Vonage
Holdings
Corp.2
292
293
294
295
296
297
298
299
99
386
505
320
180
451
402
415
503
5,602,987
6,282,574
F.3d 1133, 1135, 1137-38 (Fed. Cir. 2004).
F.3d 1351, 1353, 1355 (Fed. Cir. 2007).
F.3d 1354, 1358, 1363 (Fed. Cir. 2003).
F. App'x 942, 943-45 (Fed. Cir. 2006) (unpublished table decision).
F.3d 841, 843, 847 (Fed. Cir. 2006).
F.3d 1371, 1375, 1377 (Fed. Cir. 2005).
F.3d 1278, 1280, 1284-85 (Fed. Cir. 2005).
F.3d 1295, 1298, 1304 (Fed. Cir. 2007).
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The John Marshall Review of Intellectual Property Law
Vitronics Corp. 4,654,502
v. Conceptronic,
300
Inc.
Zimmer, Inc. v. 5,782,920
Howmedica
Osteonics
Corp.301
Solder reflow
temperature
Liquidus
temperature
Peak reflow
temperature
Modular
One-piece stem
One-piece stem
or two-piece stem
XII. VITRONICSIS A RELATIVELY WEAK DOCTRINE
Vitro ics is a relatively weak doctrine. The available opinions demonstrate that
Vitro ics may fail to maintain claim scope when faced with arguments deriving from
prosecution disclaimer, or when faced with arguments based on the ordinary and
customary meaning of a claim term. 30 2 However, the extraordinary power of
Vitro ics lies in the frequency with which the Federal Circuit has applied this case to
maintain claim scope, and the extreme ease in drafting arguments based on
itronmcs. 303
The closest the Federal Circuit has ever come to characterizing Vitronics as a
30 4
weak doctrine comes from Cybersette, Inc. v. National Arbitration Forum, Inc.
The court found that it was not compelled to apply Vitronics to one particular claim
(Claim 1) and held that it was acceptable to exclude the preferred embodiment from
this claim. 30 5 The court's rationale was as follows. The embodiment excluded from
this claim was adequately encompassed by another claim (Claim 133).306 Claim 1
was the subject of controversy in this case (Claim 133 was not an issue). 3° 7 This
308
holding worked to the disadvantage of the patentee.
90 F.3d 1576, 1578, 1580, 1583 (Fed. Cir. 1996).
111 F. App'x 593, 595, 599 (Fed. Cir. 2004) (unpublished table decision).
302 E.g., N. Am. Container v. Plastipak Packaging, 415 F.3d 1335, 1343, 1345-46, 1351 (Fed.
Cir. 2006) (using prosecution disclaimer over the Vitronics doctrine to construe claims); Elekta
Instrument SA v. O.U.R. Scientific Int'l, Inc. 214 F.3d 1302, 1308 (Fed. Cir. 2000) (using the
ordinary and customary meaning over the Vitronics doctrine to define a claim term).
303 Keith A. Orso, On Excluding PreferredEmbodiments, 90 J. PAT. & TRADEMARK OFF. SOC'Y.
918, 922 (2008) (positing that the Vitroncs doctrine has "taken on a life of its own" and is
disregarded only rarely).
304 243 F. App'x 603 (Fed. Cir. 2007) (unpublished table decision).
305 Id. at 607.
306 Id. at 608.
307 Id. at 604.
308 Id. at 610.
300
301
Preferred Embodiments in Patents
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A. Vitronics Fails to PrevailOver ProsecutionDisclaimer
1. North American Container v. Plastipak Packaging (Fed. Cir. 2006)
North American Container,Inc. v. PlastipakPackaging,Inc. concerned Reissue
patent RE 36,639, which claimed a plastic soda pop bottle, in particular, the base of
3 10
the bottle. 30 9 The disputed claim term was "generally convex."
The patentee wanted the claim to broadly encompass bottles that are entirely
convex, mixture of straight and convex, and generally convex with some concave
portions.311 The basis for this argument was that the preferred embodiment (Figure
14 of the patent) showed a bottle with concave portions.312 The patentee argued that
the claims should not exclude this preferred embodiment. 313
During prosecution, the patentee distinguished his invention from a bottle that
was disclosed in the prior art (Dechenne's U.S. Pat. No. 4,231,483). 314 During
prosecution, the patentee acknowledged that the prior art bottle had a concave
3 15
portion.
Thus, prosecution disclaimer prevailed over an attempt to invoke Vitronies, and
the result was a narrowing of claim scope to the patentee's disadvantage. 316 Slp
Track Systems, Inc. v. Metal Lite, Inc. 317 and Rheox, Inc. v. Entact, Inc.318 also
disclose the fact-pattern where an attempt to invoke Vitronies (with the goal of
319
increasing claim scope) failed in the face of prosecution disclaimer.
B. Vitronics Fails to Prevail Over the Ordinaryand CustomaryMeaning of a Claim
Term
1. Elekta Instrument SA v. O.U.R. Scientific International, Inc. (Fed. Cir. 2000)
Elekta Instrument S.A. v. O.U.R. Scientific International,Inc. concerned U.S.
320
Pat. No. 4,780,898, which claimed a machine used for radiation therapy.
Claim 1 read: "An arrangement in a gamma unit, comprising a plurality of
radiation sources.., having beam channels directed radially from said radiation
415 F.3d 1335, 1338 (Fed. Cir. 2005).
Id. at 1344.
311 Id. at 1344-45.
312 Id. at 1345.
309
310
Id.
Id. at 1340.
315 Id. at 1342-43.
313
314
Id. at 1345-46.
113 F. App'x 930 (Fed. Cir. 2004) (unpublished table decision).
318 276 F.3d 1319 (Fed. Cir. 2002).
319 Shp Track Sys., 113 F. App'x at 938 (Fed. Cir. 2004) (holding that a prosecution disclaimer
outweighed the "general rule" to not exclude preferred embodiments when construing claims);
Rheox, 276 F.3d at 1326-27 (Fed. Cir. 2002) (holding that the patentee could not claim preferred
embodiments which were disclaimed during prosecution).
320 214 F.3d 1302, 1304 (Fed. Cir. 2000).
316
317
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sources toward a common focal point ...only within a zone extending between
"321
latitudes 30-450 ....
The disputed claim term was "only."322 What was disputed was the width
(angle) of the zone, that is, whether it was a narrow zone or a broad zone. 323
The accused infringer argued that the zone could extend only from 30-450
(narrow zone), on the basis of the ordinary and customary meaning, as understood by
324
the skilled artisan.
But the patentee argued that the zone could extend from 00 to a region that was
between latitudes 30o-450 (a broad zone), on the basis that the accused infringer's
325
interpretation would exclude the preferred embodiment.
The Federal Circuit refused to apply Vitronics, and held that the ordinary and
customary meaning of the claim term "only" served to unambiguously limit the sweep
326
to a narrow sweep.
327
Similarly, North American Container, Inc. v. Plastipak Packaging, Inc.,
Brocar Products,Inc. v. Bobrick Washroom, 328 and TF.H. Publications,Inc. v.Hartz
Mountain Corp.,32 9 found that the meaning found by applying Vitronics (a meaning
that does not exclude the preferred embodiment) could not trump over the ordinary
330
and customary meaning of a claim term.
To conclude, an attorney drafting an opinion letter or arguments to be submitted
in patent litigation, might expect any meaning compelled by applying Vitronics to be
overwhelmed by the meaning found in the ordinary and customary meaning as
understood by the skilled artisan, and to be overwhelmed by any explicit context
332
(definitions and prosecution disclaimer).331 Vitronics is a relatively weak doctrine.
However, the exceptional power of Vitronics is self-evident from the data in Table
3.333 Table 3 demonstrates the high frequency by which Vitronies has worked to the
334
advantage of the patentee.
321 Arrangement in a Gamma Unit, U.S. Patent No. 4,780,898 col. 3 11.15-27 (filed Apr. 30,
1987) (issued Oct. 25, 1998).
322 Elekta, at 1306.
323Id.
324
Id. at 1306-07.
325 Id. at 1307.
326
327
Id. at 1308.
415 F.3d 1335 (Fed. Cir. 2005).
328 527 F.3d 1379 (Fed. Cir. 2008).
329 67 F. App'x 599 (Fed. Cir. 2003) (unpublished table decision).
330 BrocarProds.,527 F.3d at 1383; N. Am. Container,415 F.3d at 1346; TF.H.Pubns., 67 F.
App'x at 603.
331See, e.g., N. Am. Container,415 F.3d at 1346 (prosecution disclaimer); Elekta Instrument
SA v. O.U.R. Scientific Int'l., Inc. 214 F.3d 1302, 1308 (Fed. Cir. 2000) (ordinary and customary
meaning).
332 See supra notes 304-330 and accompanying text (providing examples where the Vitronics
doctrine did not prevail).
333 See supratbl.3.
334See supratbl.3.
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Preferred Embodiments in Patents
XIII. MEANS PLUS FUNCTION CLAIMS
The Federal Circuit has provided very little guidance on how Vitronics impacts
means plus function claims. The available information is as follows. Vitronics,
335
which warns against interpreting the claims to exclude a preferred embodiment,
may be used in the construction of a means plus function claim. For means plus
function claims, Vitronics is supplemented by Micro Chemical Inc. v. Great Plains
Chemical.336 Micro Chemical v. Great Plains applies specifically to means plus
function claims. 337
This opinion held that when multiple embodiments in the
specification correspond to the function recited in a means plus function claim, what
is required is that the claim be construed broadly enough to encompass each and
338
every one of the separate embodiments.
A. Application of Both Laitram andVitronics, Where Laitram was Applied to One
PreferredEmbodiment, andVitronics was Applied to a Different Preferred
Embodiment
The following case provides a textbook example that summarizes some of the
teachings of this essay. Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc.
concerned U.S. Pat. No. 5,490,363, which claims a type of brick. 339 Claim 1 reads, "A
pinless composite masonry block comprising a front surface, a back surface, a top
340
surface and bottom surface ... said block comprising a protrusion....
The disputed claim term was "protrusion."341 The accused infringer argued that
"protrusion" narrowly encompasses only structures that have a central narrow
portion. 342 The court observed that the patent contained a preferred embodiment
having a dogbone shape, and observed that, "[w]hile the protrusions may take any
number of shapes, they preferably have a kidney or dogbone shape." 343 The court
applied Laitram, and held that the claim must not be limited to dogbone-shaped
protrusions.
344
Additionally, the district court found that the meaning of "protrusion" excludes
circular protrusions. 345 The court observed that one of the preferred embodiments
(Figure 3A) took the form of a circular protrusion, and applied Vitronics, and held
that the properly construed claim must not exclude circular protrusions. 346 Table 4
summarizes the results of the dramatic holding of Anchor Wall v. Rockwood
Retaining Walls.
335
Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996).
336 194 F.3d 1250 (Fed. Cir. 1999).
337
Id. at 1257.
338Id. at 1258.
339340 F.3d 1298, 1300 (Fed. Cir. 2003); Composite Masonry Block, U.S. Patent No. 5,490,363
col. 12 11.
64-67, col. 13 11.1-6 (filed Oct. 13, 1994) (issued Feb. 13, 1996).
340 '363 Patent col. 12 11. 64-67, col. 13 11.
1-6 (emphasis added).
341
Anchor Wall, 340 F.3d at 1307.
342 Id. at 1305, 1308.
343
Id. at 1308 (citing the '363 Patent col. 4 11. 55-56).
344
Id. at 1308-09.
345See id. at 1305.
346 See id.at 1309 (citing the '363 Patent fig.3A).
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The John Marshall Review of Intellectual Property Law
Table 4. Application of Laitram to One Preferred Embodiment, and Vitronics to
Another Preferred Embodiment, Where the Result was Increased Claim Scope.
Preferred
Applied rule used to
Result of application of the rule
embodiment
maintain claim breadth
Protrusion having a Laitram
Claims must not be limited to a
central narrow
protrusion having a central
portion, that is,
narrow portion.
dogbone shaped
protrusions.
Protrusion that is
Vitromis
Claims must not exclude
circular.
protrusions that are circular.
Burke, Inc. v. Bruno Independent Living Aids, Inc.,347 IEX Corp. v. Blue
Pumpkin Software, Inc.,348 Sandisk Corp. v. Memorex Products,Inc.,349 and Verizon
Services Corp. v. Vonage Holdings Corp.350 are other remarkable cases where the
Federal Circuit separately applied both Laitram and Vitronics as a basis for
maintaining claim scope, to the advantage of the patentee. 351 These holdings
demonstrate the striking power of labeling an example as "preferred," where this
labeling facilitates the patentee's efforts to maintain or expand claim scope, and
where these efforts take advantage of the Laitram and Vitronics holdings.
B. Applying Laitram or Vitronics can Result in In validation of a Claim
In viewing the statistics, labeling an example as "preferred" has worked to the
352
advantage of the patentee, during litigation, in an overwhelming number of cases.
However, the word "preferred" also introduces a measure of uncertainty in the
patent. 35 3 The following demonstrates that labeling an example as "preferred" can
inspire the accused infringer to use arguments that threaten claim scope. In a
nutshell, the application of Laitram or Vitronics can be used to broaden claim scope,
354
causing the claim to fall under the invalidating umbrella of the prior art.
183 F.3d 1334 (Fed. Cir. 1999).
122 F. App'x 458 (Fed. Cir. 2005) (unpublished table decision).
349 415 F.3d 1278 (Fed. Cir. 2005).
350 503 F.3d 1295 (Fed. Cir. 2007).
351 Verizon, 503 F.3d at 1302-03, 1305; Sandisk, 415 F.3d at 1285-86; Burke, 183 F.3d at 1341;
JEX Corp., 122 F. App'x at 464-66.
352 See supra tbls.1, 3 (citing more than fifty cases where the court broadened the claim scope
in light of a preferred embodiment).
353 See, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369-70 (Fed. Cir. 2004)
(refusing to limit claim scope to the preferred embodiment and under the proper broad construction,
the claims were anticipated).
354 E.g., id.
347
348
[9:398 2009]
Preferred Embodiments in Patents
C. Application of Laitram or Vitronics to a Claim, Thereby Expanding Claim Scope,
Resulting in the Claim Falling Under the Umbrella of the ProrArt
1. In re American Academy of Science Tech Center (Fed. Cir. 2004)
In re American Academy of Science Tech Cente 5 5 concerned U.S. Pat. No.
4,714,989.356
The patentee argued for narrow claim scope, with the goal of
357
preventing the claim from falling under the invalidating effects of the prior art.
Unfortunately for the patentee, the Federal Circuit noted that an embodiment found
in the specification, which corresponded to this narrow claim scope, was expressly
labeled as "preferred."358 The opinion observed that "[t]he specification makes clear
that the database simulator is a preferred embodiment."35 9 After making this
observation, the court applied Laitram to ensure that the claims had a scope broader
than the "preferred embodiment." 36 0 As a result of the broad claim construction, the
court caused the claim to fall under the invalidating effects of the prior art, and
36 1
consequently held the claim to be invalid.
2. Apple Computer v. Articulate Systems (Fed. Cir. 2000)
Apple Computer, Inc. v. Articulate Systems, Inc. concerned U.S. Pat. No.
36 2
5,469,540, which claimed a method for displaying windows on a computer screen.
The disputed claim term was "window."36 3 The accused infringer argued that the
prior art, Adobe Photoshop software, which disclosed a menu, was prior art against
the claim. 36 4 The accused infringer characterized this menu as a window lacking any
data.36 5 The goal of the accused infringer was to convince the court that the
computer program known as Adobe Photoshop disclosed each and every element
366
found in the claim.
The patentee argued as follows: For a window to be a window, it must contain
data.36 7 The patentee presented the following argument to distinguish the claim
from the prior art. The patentee argued that, where a window contained only a
command, the command did not constitute "data," and that this window was not
368
really a window within the meaning set forth in its patent.
355 367 F.3d 1359 (Fed. Cir. 2004).
356 367 F.3d 1359, 1361 (Fed. Cir. 2004).
357 Id. at 1369, 1370.
358 Id. at 1369-70.
359 Id. at 1370 (emphasis added).
360 Id.
361 Id.
362 Id.
363 Id.
at 1369-70.
at 1370.
at 17.
at 21.
364 Id. at 18.
365 See id. at 22.
366Id. at 19.
36
7Id. at 21-22.
368 Id.
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The John Marshall Review of Intellectual Property Law
The Federal Circuit referred to an example labeled as a preferred embodiment,
and observed that this example did not contain any data.369 It only contained a
command key labeled, "HUH?"370 The court applied the rule of Vitronies, and held
that the nature of this preferred embodiment "suggests the incorrectness of Apple's
proposed interpretation that the 'data' displayed in the windows of its invention does
371
not include icons or command keys."
The court rendered the claim invalid under the Adobe Photoshop prior art.372 To
conclude, this case demonstrates that labeling an example as "preferred" introduces
some level of uncertainty into the claims, resulting ultimately (and unfortunately) in
the application of Vitronics, and a holding of claim invalidity. 373 Similar unfortunate
holdings can be found in Seachange International,Inc. v. C-COR, InC.374 and The
Toro Co. v. Deere and Co.375 These cases demonstrate that labeling an example as a
"preferred embodiment" can introduce an element of uncertainty in a patent,
resulting ultimately (and unfortunately for the patentee) in invalidation of the
376
claims.
D. Applcation ofLaitram to the PriorArt Can Increase the Scope of the Invalidating
Effects of the PriorArt
1. Ultradent Products, Inc. v. Life-Like Cosmetics, Inc. (Fed. Cir. 1997)
Ultradent Products, Inc. v. Life-Like Cosmetics, Inc. concerned U.S. Pat. No.
5,098,303, which claimed the use of a polymer for bleaching teeth.377 The issue was
378
whether the prior art (Rosenthal patent) rendered Ultradent's claims invalid.
The Federal Circuit pointed out that the Rosenthal prior art contained an
example that was labeled as "preferred," and specifically characterized this
disclosure by writing, "the Rosenthal patent discloses the use of a
carboxypolymethylene polymer, and preferably.., the use of the glycerol-soluble
379
neutralized salts of such a polymer."
The lower court had earlier construed the scope of the Rosenthal prior art to
380
encompass only the glycerol-soluble neutralized salts of the preferred embodiment.
The Federal Circuit found the lower court's claim construction to be in error, writing
Id. at 22.
370 Id.
371 Id. at 22.
372 Id. at 19, 24.
373E.g., id. at 22, 24.
374413 F.3d 1361, 1377, 1379 (Fed. Cir. 2005).
375355 F.3d 1313, 1319-21 (Fed. Cir. 2004).
376 See id.;
Seachange, 413 F.3d at 1377, 1379.
377 127 F.3d 1065, 1066-67 (Fed. Cir. 1997); Method for Bleaching Teeth, U.S. Patent 5,098,303
col. 15 11.1-24 (filed July 13, 1990) (issued Mar. 24, 1992).
378 Ultradent. 127 F.3d at 1067-68.
379 Id. at 1068 (quoting Antiseptic Composition Containing Peroxide, Glycerol, and
Carboxypolymethylene Polymer, U.S. Patent No. 3,657,413 col. 2 11. 30-33 (filed Aug. 28, 1969)
(issued Apr. 18, 1972) (emphasis added)).
380 Id. at 1067.
369
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Preferred Embodiments in Patents
that, "[t]he district court thus erred by construing the scope of the Rosenthal
381
disclosure as limited to the preferred embodiment."
In re Inland Steel Company provides a similar fact-pattern, where the recitation
of "preferred embodiment," as it applied to one example of a prior art patent, served
382
as the basis for increasing the invalidating power of the prior art patent.
Ultradentand Inland Steel demonstrate that applying the Laitram holding can
work to the disadvantage of the patentee. 38 3 What is unusual about Ultradentis that
Laitram was applied to a prior art patent, not to the disputed patent. 38 4 The above
cases provide a useful tool for litigators interested in invalidating a disputed patent.
The European Patent Office (EPO) has also addressed the concept that labeling
an example as "preferred" can increase the claim-invalidating effects of the prior
386
art. 38 5 However, in the one available case, the EPO rejected the concept.
XIV. FORM AND LOCATION OF THE TERM PREFERRED
The format or methods used for designating an example as "preferred" can
influence whether or not the court applies Laitram or Vitronis to that example. The
author suggests that the best way to label an example as preferred is to include the
term "preferred" only once in the manner of a blanket statement, where it resides in
a
title
reading, "DETAILED
DESCRIPTION
OF THE
PREFERRED
EMBODIMENT."
Where a patent fails to designate a specific example as "preferred" the court may
38 7
decline to apply Laitramto that particular example.
Honeywell International,Inc. v. ITT Industrials, Inc. concerned U.S. Pat. No.
5,164,879, which claimed part of a fuel system. 388
The term "preferred" or
"preferable" occurred at three points in the specification, but they applied only to
very specific components of the fuel system. 38 9 The term "preferred" was not
specifically associated with the embodiment that became the subject of the dispute. 390
The court refrained from applying Laitram, and held for a narrow meaning of the
disputed claim term, to the disadvantage of the patentee. 391 Similarly, in TIVO, Inc.
v. Echostar Communications Corp., the patentee argued that the limitations from a
381
Id.
265 F.3d 1354, 1364, 1366 (Fed. Cir. 2001).
See id.; Ultradent,127 F.3d at 1068.
384 See Ultradent,127 F.3d at 1068.
385 See Delphi Techs., Inc. (2006) T 1113/04 at 3, 5.
386 Id.
The concept that the scope of a prior art reference can be increased where the reference
recites that an example is "preferred" was addressed in Delphi Technologies, Inc. (2006) T 1113/04.
Id. The court contemplated the possibility that the term "preferred" could increase the scope of the
disclosure for prior art purposes, but then rejected it, writing that the reference "made no mention of
the non-preferred embodiment. It was not acceptable to guess as to what was the non-preferred
embodiment... [t]his cannot be regarded as a direct and unambiguous disclosure ...." Id.
387 E.g., Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318, 1320 (Fed. Cir. 2006).
388 Id. at 1313.
389 Electrostatically Dissipative Fuel System Component, U.S. Patent No. 5,164,879 col. 1 1. 14,
col. 3 11.60-61, col. 411. 32-34 (filed July 1, 1991) (issued Nov. 17, 1992).
390 Honeywell, 452 F.3d at 1318.
391 Id. at 1320.
382
383
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figure (Figure 3) should not be imported into the claims on the basis that this figure
was a preferred embodiment. 92 The Federal Circuit refused this argument, in part,
because of the fact that other figures were specifically labeled as "preferred" while
393
Figure 3 was not specifically labeled as such.
A. Where Each and Every One of the Examples Disclosedin a Patentis Labeled as
'Preferred"the CourtMay Refuse to Apply Vitronics
Sinorgchem Co., Shandong v. International Trade Commission concerned U.S.
Pat. No. 5,117,063, which claimed a chemical reaction method.3 94 The patentee
395
argued for a broader interpretation of the claim, referring the rule of Vitronics.
However, the opinion wrote as follows:
[t]his rule has particular force where the claims as construed do not
encompass any disclosed embodiments. See Johns Hopkins Univ. v. CellPro,
Inc., 152 F.3d 1342, 1355 (Fed. Cir.1998) ("A patent claim should be
construed to encompass at least one disclosed embodiment in the written
description portion of the patent specification.") (emphasis added). This is
not the case here. Example 10 was merely one of twenty-one distinct
examples set out in the two specifications, all of which are described as
"preferred embodiment[s]. '"396
3 97
The court refused to apply Vitronies, to the disadvantage of the patentee.
If the patent fails to disclose any variations of the preferred embodiment, the
court may refuse to apply Laitram, and may limit the claims to that non-varied
398
embodiment.
GeneralAmerican Transportation Corp. v. Cryo-Trans, Inc., concerned U.S. Pat.
No 4,704,876. 399 The term "preferred" occurred at many places in the specification,
but it was always applied to one particular structure that was always the same one,
disclosed over and over without variation. 40 0 The court limited the claim to a
structure found in this preferred embodiment, and rationalized its narrow claim
construction on the basis that, "[t]his is not just the preferred embodiment of the
invention; it is the only one described." 40 1 To view the big picture, claim construction
militated by a context of implication (a repeated and consistent statement) trumped
40 2
over the claim construction argued under Laitram.
392
516 F.3d 1290, 1301 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 306 (2008).
3 Id.
394511 F.3d 1132, 1133-34 (Fed. Cir. 2007).
395See id. at 1138.
396Id. (citation omitted) (alteration in original).
397
Id.
398
E.g., Gen. Am. Transp. Corp. v. Cryo-Trans, Inc., 93 F.3d 766, 770 (Fed. Cir. 1996).
399Id. at 786-69.
400
Cryogenic Refrigeration System, U.S. Patent No. 4,704,876 col. 2 11. 64, 66, col. 3 11.34-35,
44-45, 50-51, 59-60, col. 4 11. 9-10, 20-24, 26-28, 63-65, col. 6 11. 4-5 (filed Aug. 12, 1986) (issued
Nov. 10, 1987).
401
Gen. Am., 93 F.3d at 770.
402
See id.
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Preferred Embodiments in Patents
The Cryo-Trans fact-pattern also occurs in Wang Laboratories, Inc. v. America
Online, Inc. where the court observed that one particular preferred structure was
disclosed over and over, without variation. 40 3 The Wang opinion held that, "[t]he
usage 'preferred' does not of itself broaden the claims beyond their support in the
404
specification."
B. Claim Scope Can be MaintainedEven Where No Partof the Specification is
Designatedas 'Preferred"
1. Phillips v. AWH Corp. (Fed. Cir. 2005)
Phih'ps v. A WH Corp. provides a holding similar to that of Laitram, except that
405
If
Phillips v. A WHdoes not require that any example or embodiment be preferred.
a patent fails to label any example is preferred, the en banc case, Phillps v. A WH
Corp., can be invoked to prevent claim scope from being narrowed to features of any
particular example or embodiment. 40 6 Philps v. A WHprovides a rule broader than
Laitram, and encompasses the rule of Laitram.407 This rule is as follows: "[A]lthough
the specification often describes very specific embodiments of the invention, we have
repeatedly warned against confining the claims to those embodiments. ."408 This
4
rule has been set forth by a number of cases earlier than Phillips v. A WH. 09
2. Praxair, Inc. v. ATMI, Inc. (Fed. Cir. 2008)
Praxair,Inc. v. A TMI, 410 Inc. demonstrates yet another technique for preventing
the importation of material from the specification to the claims. This technique is
the labeling of an example in the specification by a phrase such as, "non-limiting
example" or "without limitation."411 In the fact-pattern of Praxair,the adverse party
argued that an element from the specification should be imported to the claims, on
the basis that the writing in question took the form of a global comment. 412 To
403 197 F.3d 1377, 1383 (Fed. Cir. 1999); see Gen. Am., 93 F.3d at 770 ("This [configuration] is
not just the preferred embodiment of the invention; it is the onlyone described.").
404 Wang, 197 F.3d at 1383 (citing Gen. Am., 93 F.3d at 770, 772).
405 415 F.3d 1303, 1326-27 (Fed. Cir. 2005) (en banc); see id. at 1328 (Lourie, J., concurring in
part and dissenting in part) ("I also agree with the court that claims need not necessarily be limited
to specific embodiments or preferredembodiments.") (emphasis added).
406 See id. at 1326-27.
407 Id. at 1323.
408 Id.
409 Gemstar-TV Guide Int'l, Inc. v. Int'l Trade Comm'n, 383 F.3d 1352, 1366 (Fed. Cir. 2004);
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004); Constant v. Advanced
Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988).
410 543 F.3d 1306 (Fed. Cir. 2008).
411 See Praxair,543 F.3d at 1323 (concluding that phrases such as "in a broad embodiment"
and "in a limited apparatus embodiment" prevailed over the global comment "typically" in deciding
not to import the "severely limit" restriction).
412
Id.
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provide background, the Federal Circuit periodically views certain types of writings
in the specification as a "global comment," where the global comment has the effect of
requiring a given limitation, e.g., a structure or characteristic, in each and every one
of the claims. 413 Global comments can be detected by the phrase, "The present
invention ....
" by residence of a statement in the Abstract of the patent, or by
414
residence of the statement in a title or heading in the specification of the patent.
The Praxair opinion demonstrates that comments such as, "as a limited
example," "without limitation," or "one particular embodiment," can counteract the
effects of a global comment, thereby preventing the court from importing limitations
415
from the specification to the claims.
XV. THE FEDERAL CIRCUIT ROUTINELY IGNORES STATEMENTS OF NON-LIMITATION
Patents often contain a statement requesting that the claims not be limited to
examples disclosed in the specification. 416 This statement occurs as a stand-alone
statement, typically at the very end of the patent's specification, and not associated
with any example. 417 This type of statement has existed in patents from the earliest
numbered U.S. patents (Table 5).418 Most of the patents reviewed in this article
contain this conventional statement (Table 6).419
Unfortunately, the case law conclusively demonstrates that the Federal Circuit
rarely pays attention to these statements. Table 1 lists cases where Laitram was
applied to maintain or broaden claim scope. 420 Nearly all of the relevant patents
contain the conventional statement requesting that claims not be limited to specific
examples. 421 But of all of the opinions cited in this article, only one opinion took note
of the conventional statement. 422 This opinion was Rexnord Corp. v. Laitram
Corp.,4 2 3 where the relevant patent was U.S. Pat. No. 5,634,550.424 The conventional
statement took the form, "it is to be understood that the invention is not limited in its
Brody, Contexts ofImplication, supra note 10, 5.
Id.
415 See Praxair,543 F.3d at 1323.
416 See, e.g., infra tbl.5.
417 E.g., Liquid Medium Capacitive Displacement Sensor, U.S. Patent No. 4,624,140 col. 6 11.
15-21 (filed July 30, 1984) (issued Nov. 25, 1986).
418 See infra tbl.5 (providing examples of patents containing non-limitation statements issued
between 1836 and 1841).
419 See infra tbl.6 (providing recent examples of patents containing statements of non413
414
limitation).
420 See supratbl. 1.
421 E.g., Humeral Nail for Fixation of Proximal Humeral Fractures, U.S. Patent No. 5,472,444
col. 5 11. 40-41 (filed May 13, 1994) (issued Dec. 5, 1995) ("Although this description refers to a
particular embodiment, the following claims are not intended to be so limited."); Personal Mobility
Vehicle, U.S. Patent No. 4,570,739 col. 3 11.
29-34 (filed Sept. 29, 1983) (issued Feb. 18, 1986)
("[Sipecific structural and functional details disclosed herein are not to be interpreted as limiting,
but merely as a basis for the claims and as a representative basis for teaching one skilled in the art
to variously employ the present invention in virtually any appropriately detailed structure.").
422 See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1345 (Fed. Cir. 2001).
423
Id.
424
Id. at 1340.
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Preferred Embodiments in Patents
application to the details of construction and the arrangements of components set
425
forth in the following description or illustrated in the drawings."
In addition to merely pointing out or observing the conventional statement, the
opinion took another step by holding that the conventional statement was a reason
426
for maintaining claim breadth.
In view of the Federal Circuit's near-universal practice of ignoring the statement
requesting non-limitation, 427 the author recommends including in the specification
the following title or heading in order to ensure that Laitram can be invoked to
maintain or broaden claim scope. The title is: "Detailed Description of the Preferred
Embodiment."
Table 5. Many of the Earliest U.S. Patents Include Statements Of Interpretation
Requesting Non-Limitation of Claims to the Disclosed Embodiments.
U.S. Patent No. Issue date
Statement in the Specification
10428
1836
"It consists in the combination of a wheel having
plane irons ... it is for this combination, however
it may be varied, that this applicant claims a
patent upon this specification."
34429
1836
"We have not given any particular dimensions or
scale of proportions, as these may be changed
without altering the principle of construction and
may be safely left to the judgment of those
conversant with such structures."
84430
1836
"I do not limit myself to the precise construction
above described, but desire the privilege of altering
the same in any manner while I attain the same
end by means substantially the same."
96431
1836
"I do further declare that I do not intend by the
foregoing description and claims, to limit myself to
any particular measurement or precise form of the
respective parts of this instrument but to vary
these as I may think proper while the principle of
action remains unchanged."
425 Direction Changing Mechanism for Transferring Articles Between Transverse Conveyors,
U.S. Patent No. 5,634,550 col. 3 11.54-57 (filed Jan. 19, 1995) (issued Jun. 3, 1997).
426 Rexnord, 274 F.3d at 1345.
427 See supra notes 420-426 and accompanying text.
428 Dye-Wood and Dyestuff Cutting and Shaving Machine, U.S. Patent No. 10 p. 1 11. 108-110,
p. 2 11. 1-4 (issued Aug. 10, 1836).
429 Improvement in Vertical Cylindrical Steam-Boilers, U.S. Patent No. 34 p. 1 (issued Sept.
29, 1836).
430 Safety Steam-Engine, U.S. Patent No. 84 p. 3 11. 77-81 (issued Nov. 23, 1836).
431 Temple for Weaving Cloth, U.S. Patent No. 96 p. 1 11.96-103 (issued Jan. 5, 1833) (reissued
Dec. 2, 1836).
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111432
1837
2000433
1841
10,019434
1853
"I do hereby declare that I claim as my
invention.., without intending to confine myself
to any particular pattern, or shape, in constructing
them, but to vary them in any way I may think
proper, while their construction and mode of
operation remain substantially unchanged."
"Having thus described the nature of my
invention, I would have it understood that
although I have been particular in describing the
processes and quantities of matter as practiced by
me ... I do not confine myself thereto ......
"Having
now
described
and
particularly
ascertained the nature of my invention ... I do not
confine or restrict myself to the precise details or
arrangements which I have had occasion to
describe or refer to, as many variations may be
made therefrom without deviating from the
principles or main features of my invention ......
Table 6. Examples of Recent Patents with Statements Requesting Non-Limitation
of the Claims to Embodiments Disclosed in the Specification.
U.S. Patent No.
Statement in the Specification
5,602,987435
"While the embodiments of the various aspects of the
assigned to
present invention that have been described are the preferred
SanDisk Corp.
implementation, those skilled in the art will understand
that variations thereof may also be possible. Therefore, the
invention is entitled to protection within the full scope of the
appended claims."
5,884,096436
"While the preferred embodiment of the invention has been
assigned to Apex
illustrated and described, it will be appreciated that various
PC Solutions, Inc.
changes can be made therein without departing from the
spirit and scope of the invention .... Therefore, the scope of
the invention is to be determined solely from the following
claims."
Fastenings for Harness, U.S. Patent No. 111 p. 1 11. 65-66, 70-75 (issued Jan. 21, 1837).
Improvement in the Manufacture of Starch, U.S. Patent 2,000 p. 3 (issued Mar. 12, 1841).
434 Improvement in the Manufacture of Plain and Figured Fabrics, U.S. Patent 10,019 p. 3
(issued Sept. 13, 1853).
435 Flash Eeprom System, U.S. Patent No. 5,602,987, at [73], col. 16 11. 17-22 (filed Dec. 29,
1993) (issued Feb. 11, 1997).
436 Interconnectino System for Viewing and Controlling Remotely Connected Computers with
On-Screen Video Overlay for Controlling of the Interconnection Switch, U.S. Patent No. 5,884,096,
at [73], col. 13 II. 34-37, 49-51 (filed Nov. 12, 1997) (issued Mar. 16, 1999).
432
433
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4,624,140437
assigned to Optima
Systems, Inc.
5,838,906438
assigned to Regents
of the University of
California
5,928,197439
assigned to LiebelFlarsheim Co.
4,624,140440
assigned to Optima
Systems, Inc.
5,015,247441
assigned to Karlin
Technology, Inc.
Preferred Embodiments in Patents
"The foregoing description and illustration of the preferred
embodiments, however, is provided only to illustrate various
specific configurations and applications of the invention.
Many modifications and variations on the illustrated
embodiments may be made without departing from the
spirit and scope of the invention as indicated by the
appended claims."
"In the foregoing specification, the invention has been
described with reference to a specific exemplary embodiment
thereof. It will, however, be evident that various
modifications and changes may be made thereunto without
departing from the broader spirit and scope of the invention
as set forth in the appended claims ....
The specification
and drawings are, accordingly, to be regarded in an
illustrative rather than a restrictive sense, the invention
being limited only by the provided claims."
"The invention has been described with reference to a
specific embodiment .... Therefore, this specific embodiment
is to be interpreted as exemplary and not limiting, with the
scope of protection being determined solely from the
following claims."
"The foregoing description and illustration of the preferred
embodiments, however, is provided only to illustrate various
specific configurations and applications of the invention.
Many modifications and variations on the illustrated
embodiments may be made without departing from the
spirit and scope of the invention as indicated by the
appended claims."
"While the invention has been described with regards to the
preferred embodiment, it is recognized that alternative
embodiment may be devised which would not depart from
the present invention."
437 Liquid Medium Capacitive Displacement Sensor, U.S. Patent No. 4,624,140, at [73], col. 6 11
15-21 (filed July 30, 1984) (issued Nov. 25, 1986).
438 Distributed Hypermedia Method for Automatically Invoking External Application Providing
Interaction and Display of Embedded Objects Within a Hypermedia Document, U.S. Patent No.
5,838,906, at [73], col 16 11.46-51, 57-60 (filed Oct. 17, 1994) (issued Nov. 17, 1988).
439 Controlling Plunger Drives for Fluid Injectio0ns in Animals, U.S. Patent No. 5,928,197, at
[73], col. 17 11.18-19, 30-33 (filed Aug. 28, 1997) (issued Jul. 27, 1999).
440 Liquid Medium Capacitive Displacement Sensor, U.S. Patent No. 4,624,140, at [73], col. 6 11.
15-21 (filed July 30, 1984) (issued Nov. 25, 1986).
441 Threaded Spinal Implant, U.S. Patent No. 5,015,247 col. 10 11. 57-60 (filed June 13, 1998)
(issued May 14, 1991).
The John Marshall Review of Intellectual Property Law
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5,634,550442
assigned to
Rexnord Corp.
"Before one embodiment of the invention is explained in
detail, it is to be understood that the invention is not limited
in its application to the details of construction and the
arrangements of components set forth in the following
description or illustrated in the drawings. The invention is
capable of other embodiments and of being practiced or
being carried out in various ways."
XVI. EQUATING BEST MODE WITH THE PREFERRED EMBODIMENT
An adverse party interested in invalidating a patent can direct the court's
attention to an example labeled as "preferred," argue that this example represents
the best mode, and then try to convince the court that this particular example is non443
enabling.
A. Background
The best mode and enablement requirements have a statutory basis in 35 U.S.C.
§ 112.444 According to an early opinion from the U.S. Supreme Court, 445 the best
mode requirement has an origin in Wood v. Zimmer 46 while enablement has an
origin in Rex v. Arkw!right.447
To satisfy the enablement requirement, the
specification must enable the skilled artisan to make and use at least one
embodiment of the invention, using the combination of information provided by the
specification and the knowledge of the skilled artisan. 448 As set forth by the case law,
the best mode requirement further imposes the requirement to disclose specific
materials and materials that were recognized by the inventors as necessary for
making or using the best mode, providing that these materials and methods are
beyond that which is understood by the skilled artisan. 449 Where a patent fails to
satisfy the requirements for best mode and enablement, the claims may be rendered
450
invalid.
The Federal Circuit typically equates preferred embodiments with the best
mode. 451 Bayer AG v. Schein Pharms, Inc., wrote that, "we have long held that
compliance with the best mode requirement requires disclosing the inventor's
442 Direction Changing Mechanism for Transferring Articles Between Transverse Conveyors,
U.S. Patent No. 5,634,550, at [73], col. 3 11. 53-59 (filed Jan. 19, 1995) (issued June 3, 1997).
443 E.g., Spectra Physics v. Coherent, Inc., 827 F.2d 1524, 1536-37 (Fed. Cir. 1987)
(invalidating the patent because the best mode, which was designated "preferred" in the
specification, was not enabled).
44435 U.S.C. § 112 (2006).
445Evans v. Eaton, 16 U.S. (3Wheat,) 454 app. (1818).
446 Id. app.; Wood v. Zimmer, (1815) 171 Eng. Rep. 161, 161 (K.B.) (appeal taken from Ch.).
447 Evans, 16 U.S. at app.; Rex v. Arkwright, (1785) 1 Carp.P.C. 53 (K.B.).
448 In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
449 Young Dental Mfg., Inc. v. Q3 Special Prods., Inc., 112 F.3d 1137, 1144 (Fed. Cir. 1997);
Christianson v. Colt Indus. Operating Corp., 822 F.2d 1544, 1563 (Fed. Cir. 1987).
450 See YoungDental, 112 F.3d at 1144; Wright, 999 F.2d at 1563.
451See Bayer AG v. Schein Pharms, Inc., 301 F.3d 1306, 1316 (Fed. Cir. 2002).
[9:398 2009]
Preferred Embodiments in Patents
preferred embodiment .... "452 High Concrete Structures, Inc. v. New Enterprise
Stone and Lime Co., Inc. wrote that, "the best mode requirement precludes inventors
'from applying for patents while at the same time concealing from the public
preferred embodiments of their inventions. . . ."'453 Teleflex, Inc. v. Ficosa North
America Corp. also sets forth this equivalence, "[t]he best mode requirement creates
a statutory bargained-for exchange.., and the public receives knowledge of the
preferred embodiments .. ...454 A number of other cases have also identified the best
mode with the preferred embodiment, as cited. 455 While the court has never
explicitly held that examples labeled as "preferred" are, in fact, the best mode,
labeling an example as "preferred" can be used to persuade the court that the
456
example is, in fact, the best mode, as demonstrated below.
Typically, the specification discloses, at varying levels of detail, one or more
examples of the invention that had been constructed or synthesized before the filing
date of the patent application. 45 7 Typically, the examples are working examples, but
they can also include examples that are totally prophetic, or even examples that the
458
applicant found were inoperative as of the filing date.
There is no requirement in patent law that all of the examples be operative.
According to Atlas Powder Co. v. E.I.du Pont De Nemours & Co., "[e]ven if some of
the claimed combinations were inoperative, the claims are not necessarily invalid. 'It
is not a function of the claims to specifically exclude ... possible inoperative
substances . . . .' Of course, if the number of inoperative combinations becomes
45 9
Similarly, In re Angstadt'6 0
significant.., the claims might indeed be invalid."
and CFMT,Inc. v. Yieldup InternationalCorp.,46 1 held that it is not necessary for
every permutation within a genus of generally operable devices be operable, in order
for an inventor to obtain a claim that encompasses a genus of devices. 462 In fact,
Yieldup held that a party asserting inoperability of a claim must show that all of the
463
disclosed embodiments are inoperative and non-enabled.
452
Id.
453377 F.3d 1379, 1383 (Fed. Cir. 2004) (quoting In re Gay, 309 F.2d 769, 772 (C.C.P.A. 1962).
454299
F.3d 1313, 1330 (Fed. Cir. 2002).
Pfizer, Inc. v.Teva Pharms. USA, Inc., 518 F.3d 1353, 1364 (Fed. Cir. 2008); Allvoice
Computing PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236, 1246 (Fed. Cir. 2007); Cardiac
Pacemakers, Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1378 (Fed. Cir. 2004); Gargoyles, Inc. v.
United States, 113 F.3d 1572, 1582 (Fed. Cir. 1997); U.S. Gypsum Co. v. Nat'l Gypsum Co 74 F.3d
1209, 1214 (Fed. Cir. 1996); Glaxo, Inc. v. Novopharm, Ltd. 52 F.3d 1043, 1050 (Fed. Cir. 1995);
Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926 (Fed. Cir. 1990); Dana Corp. v. IPC Ltd.
P'ship, 860 F.2d 415, 418 (Fed. Cir. 1988); Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 589 (Fed.
Cir. 1988); DeGeorge v. Bernier, 768 F.2d 1318, 1324 (Fed. Cir. 1985), supercededin partby statute,
Patent Law Amendments Act of 1984, Pub. L. No. 98-622, § 201-07, 98 Stat. 3383, 3386-89
(combining the Board of Appeals and the Board of Interferences).
456 See Pfizer,518 F.3d at 1364 ("Typically, the best mode issue concerns the applcant's failure
to disclose a preferred embodiment, but not always.").
457 See Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1577 (Fed. Cir.
1984) (discussing embodiments based on approximately 300 actual experiments).
458 Id. at 1576-77.
459Id. (citations omitted).
460 537 F.2d 498 (C.C.P.A. 1976).
461 349 F.3d 1333 (Fed. Cir. 2003).
462 Id. at 1339; Angstadt, 537 F.2d at 502-03.
463 Yieldup, 349 F.3d at 1339 (emphasis added).
455
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The ability for claims to encompass embodiments that are incapable of working
is vividly revealed by the fact that claims can encompass technologies that did not
46 4
exist as of the filing date.
B. The Burden for EnablementIncreasesfor the Best Mode
Where an example in the specification is found to be the best mode, the
consequence is a more specific or particular burden for satisfying the enablement
requirement. 465 This increased particularity was set forth in Dana Corp. v.IPC
Limited Partnershipas, "[e]nablement looks to placing the subject matter of the
claims generally in possession of the public. If, however, the applicant develops
specific instrumentalities or techniques which are recognized ... as the best
way ... the best mode requirement imposes an obligation to disclose that information
to the public as well."466 As set forth in Spectra-Physics,Inc. v. Coherent, Inc., the
467
best mode requirement requires an identification of the best mode, e.g., by a name.
But if a mere identification is not enough to allow the skilled artisan to practice the
best mode, what is additionally required is details, e.g., procedures and materials, for
carrying out the best mode. 468 In White Consolidated Industries, Inc. v. Vega
Servo-Control, Inc., the best mode was identified. 469 But because the patent failed to
470
disclose details on carrying out the best mode, the patent was rendered invalid.
1. Spectra-Physics, Inc. v. Coherent, Inc. (Fed. Cir. 1987)
In Spectra-Physics,the court rendered a patent invalid for failure to disclose the
best mode, where the best mode was identified in the patent's specification by the
term "preferred."471 Spectra-Physics concerned U.S. Pat. No. 4,378,600, which
claimed a laser. 472 The specification disclosed that the laser can be made by brazing
and that TiCuSil is the preferred brazing material. 473 But the specification failed to
provide details on the TiCuSil brazing method. 474 In general, this type of failure can
often be remedied by invoking the knowledge of the person having ordinary skill in
the art.475 However, the problem facing the patentee was that TiCuSil brazing
464
Mark A. Lemley, The ChangingMeaning of Patent Claim Terms, 104 MICH. L. REV. 101,
108-09 (2005).
Dana Corp. v. IPC Ltd. P'ship, 860 F.2d 415, 419 (Fed. Cir. 1989).
Id. (quoting Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1532 (Fed. Cir. 1987)).
467 827 F.2d 1524, 1536 (Fed. Cir. 1987).
465
466
468
See id.at 1536-37.
713 F.2d 788, 789 (Fed. Cir. 1983).
See id. at 790 n. 1, 792 (implying that the best mode was not enabled).
471 Spectra-Physics,827 F.2d at 1537.
472 Id. at 1526; Gas Laser, U.S. Patent No. 4,378,600 col. 9 1. 1, (filed May 4, 1981) (issued Mar.
29, 1983).
473'600 Patent col. 6 11. 22-27; see Spectra-Physics,827 F.2d at 1536.
474 Spectra-Physics,827 F.2d at 1537.
475 See Joseph E. Root, Ducking the Asteroid: PracticalSteps Toward Best Mode Compliance,
36 AIPLA Q.L. 455, 505-06 (2008).
469
470
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Preferred Embodiments in Patents
methods had failed to work in the hands of the inventors. 476 The court identified this
difficulty as, "[t]he known difficulty recognized by [the inventors] ...in working with
TiCuSil as a braze material ....477
An embodiment labeled as "preferred" was found by the court to implicate this
embodiment as the best mode for carrying out the claimed invention. 478 The opinion
observed that "[t]he patent specifications make clear ...that the best mode ... was
more than just brazing in general-it was TiCuSil active metal brazing." 479 The
opinion continued by writing that the patentee "acknowledges as much by its
...
480
references to TiCuSil as the "preferred" brazing material.
After implicating the preferred embodiment as the best mode, the court focused
on the failure to enable this particular embodiment. 48 ' The court wrote, "[t]he
appropriate question then is not whether the inventors disclosed TiCuSil brazing at
all-they did-but whether TiCuSil brazing was adequatelydisclosed. Even though
there may be a general reference to the best mode, the quality of the disclosure may
be so poor as to effectively result in concealment." 48 2 The opinion wrote that the
patentee "did not disclose any details about its brazing process. It is this complete
lack of detail which effectively resulted in its concealment." 48 3 The court rendered
48 4
the patent invalid for failing to disclose the best mode.
To conclude, labeling an embodiment as a "preferred embodiment" can work to
the disadvantage of the patentee. An adverse party can argue that the term
"preferred" implicates the embodiment as representing the best mode, and attempt to
convince the court that the disclosure of the best mode was so poor as to constitute
non-enablement of the best mode, or concealment of the best mode. 48 5 SpectraPhysics, Inc. v. Coherentprovides a useful approach (useful to the accused infringer)
48 6
for litigators interested in invalidating a patent.
Note also that arguments are available for convincing the court that a preferred
48 7
mode is not the best mode.
476 Spectra-Physics, 827 F.2d at 1530-31.
477Id. at 1536 n.4.
478
Id. at 1536.
479
Id.
480 Id.
481
Id. at 1536-37.
482
Id. at 1536 (citation omitted).
483 Id.
at 1537.
Id. at 1538.
485 See id. at 1536-38.
486 See id.
484
See e.g., Wahl Instruments, Inc. v. Acvious, Inc., 950 F.2d 1575 (Fed. Cir. 1991).
Any process of manufacture requires the selection of specific steps and materials
over others. The best mode does not necessarily cover each of these selections. To
so hold would turn a patent specification into a detailed production schedule,
which is not its function .... [T]he best mode inquiry is not so mechanical. A step
or material or source or technique considered "best" in a manufacturing
circumstance may have been selected for a non-"best mode" reason, such as the
manufacturing equipment was on hand, certain materials were available, prior
relationship with supplier was satisfactory, or other reasons having nothing to do
with development of the invention.
Id. at 1581; see also, e.g., Bayer AG v. Schein Pharms., Inc., 301 F.3d 1306, 1321-22 (Fed.
Cir. 2002) (holding that disclosure of the class of compounds, rather than the specific
487
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CONCLUSION
An overwhelming majority of opinions from the Federal Circuit reveals that
labeling an example as "preferred" works to the advantage of the patentee, where
labeling an example as such resulted in an increase or maintenance in claim scope.
To view the statistics disclosed in this article, applying Laitram or Vitronics worked
to the patentee's advantage in about sixty cases. 48 8 In contrast, labeling an example
48 9
as "preferred" backfired and worked against the patentee in only about five cases,
for example, In re American Academy of Science Tech Center#90 and Apple Computer
491
v. Articulate Systems.
In view of these straightforward statistics, it is recommended that all attorneys
and agents include, in the patent's specification, the phrase, "Description of the
Preferred Embodiment."
Typically, the very end of the written description part of patents includes a
conventional statement requesting that the claims not be limited to the preferred
embodiment. 492 However, in preparing this article, the author discovered that the
Federal Circuit almost always disregards this statement. This fact reinforces the
author's recommendation that inventors should ensure the availability of the
Laitram holding by including the phrase, "Description of the Preferred Embodiment."
On the other hand, labeling an example as a "preferred embodiment" introduces
an element of uncertainty into the patent. 493 The preferred embodiment can be
turned against the patentee. 494 This article demonstrates a number of arguments for
taking advantage of the fact that an example is labeled as "preferred," and using this
"preferred" label as a basis for invalidating the claims.
A familiarity with this article, as well as with the author's earlier article on
claim construction, enables one to predict how the Federal Circuit will construe the
claims in any patent being litigated, and provides strategies useful (for both sides)
during litigation.
"preferred" compound, used to make an intermediate of the claimed chemical does not
violate the best mode requirement because the choice of compound does not materially
affect the properties of the claimed chemical); Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d
955, 964 (Fed. Cir. 2001) ("[Tlhe best mode requirement does not compel disclosure of [the
inventor's] unclaimed method for synthesizing [a chemical used in the patented method].").
488 See supratbls. 1, 3,
489 See supra notes 355-386 and accompanying text.
490 367 F.3d 1359, 1370 (Fed. Cir. 2004).
491 234 F.3d 14, 22 (Fed. Cir. 2000).
492 See supra tbls.5, 6 (providing early and recent examples of patents with statements of nonlimitation).
493 See supra notes 355-376, 465-487 and accompanying text.
494 See supra notes 355-376, 465-487 and accompanying text.
Preferred Embodiments in Patents
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APPENDIX ONE
"Preferred" is Frequently Recited in the Specifications of the Earliest U.S. Patents.
U.S.
Issue
Quotation from the patent specification
Pat. No. Date
"[B]ut the short roller with but one cutter upon it will be
preferable"
"For flax the fibers of which are of ordinary length, I prefer that
57496
1836 they should be about one-eighth of an inch in diameter."
160497
1837
177498
1837
10,008
1853
499
20,097
500
30,027
1858
1860
501
30,057
1860
"If it be preferred the lead may be cast in sheets, and then rolled
up, or it may be shotted of various sizes, but I prefer feathering,
as exposing more surface with the least trouble."
"In machines of great power the circular or elliptic will be
preferable to the spiral, which is represented in the drawing
referred to."
"In order to make the bottom of the boot or shoe perfectly
waterproof, it is preferable that the sole should be attached to
the 'upper' by waterproof cement; but it may be sewed or
pegged...
"Another (and perhaps preferable) form of bed bottom is
exhibited in Fig. 2."
"I prefer the latter arrangement as it creates less friction that a
continuous bearing ......
"I prefer to place it upon the periphery of the middle propeller,
as seen in the drawings, for the reasons that the shaft B has a
502
40,013
003
503
1863
40,050
1863
504
65,003
1867
505
495
1836).
496
firm support at this point . ..."
"I prefer, however, when it is desired to close a tube, to
substitute a cap for the thimble, such cap screwing into the plate
in the same manner as the thimble."
"I prefer that there shall b e one of these flutings opposite each
of the perforations to b."
"The cylinder K is preferably cast as a shell, having suitable
openings . ..."
Machine for Manufacturing Silver Spoons, U.S. Patent No. 26 p. 2 11.20-21 (issued Sept. 20,
Hemp and Flax Reving Machine, U.S. Patent No. 57 p. 1 11. 59-62 (issued Oct. 19, 1836).
497Process of Manufacturing White Lead, U.S. Patent No. 160 p. 1 11. 19-23 (issued Apr. 17,
1837).
498
Rotary Stem-Engine, U.S. Patent No. 177 p. 1 11. 36-38 (issued Apr. 25, 1837).
499India-Rubber
13, 1853).
Soles for Boots and Shoes, U.S. Patent No. 10,008 p. 1 11. 99-102 (issued Sept.
Bedstead, U.S. Patent No. 20,097 p. 1 11. 62-63 (issued Apr. 27 1858).
U.S. Patent No. 30,027 p. 1 11. 80-82 (issued Sept. 11, 1860).
502 Marine Propulsion, U.S. Patent No. 30,057 p. 1 11. 74-77 (issued Sept. 18, 1860).
503 Improvement in Joints for Tubes of Surface-Condensers, U.S. Patent No. 40,013 p. 1 (issued
Sept. 22, 1863).
504 Improvement in Lamp-Burners, U.S. Patent No. 40,050 p. 2 (issued Sept. 22, 1863).
505 Improvement in Steam Engines, U.S. Patent No. 65,003 p. 1 (issued May 21, 1867).
500
501 Miter-Box,
The John Marshall Review of Intellectual Property Law
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65,006
1867
506
70,013
1867
"It will also be obvious that the position of the parts may be
somewhat varied, as, for instance, the knife might be made
adjustable ... but I prefer the arrangement shown, as it
combines cheapness and simplicity ......
"This I accomplish by enclosing the axle at a point just outside
the hub, and preferably just beneath the springs, when used, or
507
75,019
1868
508
100,003
509
506
507
1870
at a corresponding point in other wagons."
"I prefer the braided or knit tubes, however, as it is not
necessary, when they are used, to have a seam on the side."
"In some cases, however, cast-iron may be employed for the
outer shell of the furnace .. but when using cast-iron to form
the shell of the furnace I prefer to employ strong tie bolts and
hoops of wrought iron or steel, for the purpose of retaining the
several parts of the shell together in case of a fracture .... "
Machine for Cutting Tobacco, U.S. Patent No. 65,006 p. 1 (issued May 21, 1867).
Improvement in Wagon-Axles and Gearing, U.S. Patent No. 70,013 p. 1 (issued Oct. 22,
1867).
Improvement in Shot-Cartridges, U.S. Patent No. 75,019 p. 1 (issued Mar. 3, 1868).
Improvement in Processes and Apparatus for the Manufacture of Iron and Steel, U.S.
Patent No. 100,003 p. 2 (issued Feb. 22, 1870).
508
509